Patent Cooperation Treaty (PCT) Information
For information concerning PCT member countries, see the notice
appearing in the Official Gazette at 1382 O.G. 61, on September 11, 2012.
For information on subject matter under Rule 39 that a particular
International Searching Authority will not search, see Annex D of the PCT
Applicants' Guide.
European Patent Office as Searching and Examining Authority
The European Patent Office (EPO) may act as the International Searching
Authority (ISA) or the International Preliminary Examining Authority (IPEA)
for an international application filed with the United States Receiving
Office or the International Bureau (IB) as Receiving Office where at least
one of the applicants is either a national or resident of the United States
of America. However, the use of the EPO is restricted. The EPO will not act
as an ISA for applications with one or more claims directed to a business
method. For the definition of what the EPO considers to be precluded
subject matter in the field of business methods, see PCT Applicants's
Guide, Annexes D(EP), E(EP) and the Official Notices (PCT Gazette) dated
May 6, 2010, page 94
(http://www.wipo.int/pct/en/official_notices/index.html). The EPO will act
as an IPEA only if it also acted as the ISA.
The search fee of the European Patent Office was increased, effective
April 1, 2012, and was announced in the Official Gazette at 1377 O.G. 5, on
April 3, 2012.
Korean Intellectual Property Office as Searching and Examining Authority
The Korean Intellectual Property Office may act as the ISA or the IPEA for
an international application filed with the United States Receiving Office
or the International Bureau (IB) as Receiving Office where at least one of
the applicants is either a national or resident of the United States of
America. The announcement appears in the Official Gazette at 1302 O.G.
1261 on January 17, 2006.
The search fee of the Korean Intellectual Property Office was decreased,
effective January 1, 2012, and was announced in the Official Gazette at
1373 O.G. 177, on December 27, 2011.
Australian Patent Office as Searching and Examining Authority
The Australian Patent Office (IP Australia) may act as the ISA or the
IPEA for an international application filed with the United States
Receiving Office or the International Bureau (IB) as Receiving Office where
at least one of the applicants is either a national or resident of the
United States of America. The announcement appears in the Offical Gazette
at 1337 O.G. 265, on December 23, 2008. However, the use of IP Australia is
restricted. IP Australia will not act as an ISA for applications with one
or more claims directed to the fields of business methods or mechanical
engineering or analogous fields of technology as defined by specified areas
of the International Patent Classification System, as indicated in the
Official Gazette at 1337 O.G. 261 on December 23, 2008, in Annex A to the
agreement between the USPTO and IP Australia, IP Australia will act as an
IPEA only if it also acted as the ISA.
The search fee of IP Australia was increased, effective July 1, 2012,
and was announced in the Official Gazette at 1380 O.G. 5, on July 3, 2012.
The Federal Service on Intellectual Property, Patents & Trademarks of
Russia as Searching and Examining Authority
The Federal Service on Intellectual Property, Patents & Trademarks of

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 332

Russia (Rospatent) may act as the ISA or the IPEA for an international
application filed with the United States Receiving Office or the
International Bureau (IB) as Receiving Office where at least one of the
applicants is either a national or resident of the United States of
America. The announcement appears in the Official Gazette at 1378 O.G. 162,
on May 8, 2012.
The search fee of Rospatent was increased, effective June 1, 2012, and
was announced in the Official Gazette at 1378 O.G. 162, on May 8, 2012.
Fees
The transmittal fee for the USPTO was changed to include a basic portion
and a non-electronic filing fee portion, effective November 15, 2011, and
was announced in the Federal Register on November 15, 2011. Search fees for
the USPTO were changed, effective January 12, 2009, and were announced in
the Federal Register on November 12, 2008. The fee for filing a request for
the restoration of the right of priority was established, effective
November 9, 2007, and was announced in the Federal Register on September
10, 2007.
International filing fees were decreased, effective January 1, 2012,
and were announced in the Official Gazette at 1373 O.G. 177, on December
27, 2011.
The schedule of PCT fees (in U.S. dollars), as of July 1, 2012, is as
follows:
International Application (PCT Chapter I) fees:
Transmittal fee
Basic Portion $240.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (other than a
small entity) $400.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (small entity) $200.00
Search fee
U.S. Patent and Trademark Office (USPTO) as
International Searching Authority (ISA)
- Search fee $2,080.00
- Supplemental search fee, per additional
invention (payable only upon invitation) $2,080.00
European Patent Office as ISA $2,426.00
Korean Intellectual Property Office as ISA $1,101.00
IP Australia as ISA $2,254.00
Federal Service on Intellectual Property, Patents &
Trademarks of Russia (Rospatent) as ISA $453.00
International fees
International filing fee $1,453.00
International filing fee-filed in paper
with PCT EASY zip file or
electronically without PCT EASY zip file $1,344.00
International filing fee-filed
electronically with PCT EASY zip files $1,234.00
Supplemental fee for each page over 30 $16.00
Restoration of Priority

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 333

Filing a request for the restoration of the
right of priority under § 1.452 $1,410.00
International Application (PCT Chapter II) fees associated
with filing a Demand for Preliminary Examination:
Handling fee $219.00
Handling fee-90% reduction, if applicants meet criteria
specified at:
http://www.wipo.int/pct/en/fees/fee_reduction.pdf $21.90
Preliminary examination fee
USPTO as International Preliminary
Examining Authority (IPEA)
- USPTO was ISA in PCT Chapter I $600.00
- USPTO was not ISA in PCT Chapter I $750.00
- Additional preliminary examination fee,
per additional invention
(payable only upon invitation) $600.00
U.S. National Stage fees (for international applications entering
the U.S. national phase under 35 U.S.C. 371) can be found on the USPTO's
Web site (www.uspto.gov).
July 26, 2012 ANDREW H. HIRSHFELD
Deputy Commissioner for
Patent Examination Policy
United States Patent and Trademark Office

Notice of Maintenance Fees Payable
Title 37 Code of Federal Regulations (CFR), Section 1.362(d) provides
that maintenance fees may be paid without surcharge for the six-month
period beginning 3, 7, and 11 years after the date of issue of patents
based on applications filed on or after Dec. 12, 1980. An additional
six-month grace period is provided by 35 U.S.C. 41(b) and 37 CFR 1.362(e)
for payment of the maintenance fee with the surcharge set forth in 37 CFR
1.20(h), as amended effective Dec. 16, 1991. If the maintenance fee is
not paid in the patent requiring such payment the patent will expire on
the 4th, 8th, or 12th anniversary of the grant.
Attention is drawn to the patents that were issued on September 15, 2009
for which maintenance fees due at 3 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 7,587,768 through 7,591,022
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on September 13, 2005
for which maintenance fees due at 7 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 6,941,577 through 6,944,881
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on September 11, 2001
for which maintenance fees due at 11 years and six months may now be paid.
The patents have patent numbers within the following ranges:
Utility Patents 6,286,144 through 6,289,514
Reissue Patents based on the above identified patents.
No maintenance fees are required for design or plant patents.
Payments of maintenance fees in patents may be submitted electronically
over the Internet at www.uspto.gov. Click on the "Site Index" link at the
top of the homepage (www.uspto.gov), and then scroll down and click on the
"Maintenance Fees" link for more information.
Payments of maintenance fees in patents not submitted electronically
over the Internet should be mailed to "United States Patent and Trademark
Office, P.O. Box 979070, St. Louis, MO 63197-9000".
Correspondence related to maintenance fees other than payments of
maintenance fees in patents is not to be mailed to P.O. Box 979070,
St. Louis, MO 63197-9000, but must be mailed to "Mail Stop M
Correspondence, Director of the U.S. Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450".
Patent owners must establish small entity status according to 37 CFR
1.27 if they have not done so and if they wish to pay the small entity
amount.
The current amounts of the maintenance fees due at 3 years and six
months, 7 years and six months, and 11 years and six months are set forth
in the most recently amended provisions in 37 CFR 1.20(e)-(g). To obtain
the current maintenance fee amounts, please call the USPTO Contact Center
at (800)-786-9199 or see the current USPTO fee schedule posted on the USPTO
Internet web site. At the top of the USPTO homepage at www.uspto.gov, click
on the "Site Index" link and then scroll down and click on the "Fees,
USPTO" link to find the current USPTO fee schedule.

37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of one of the joint inventors. The petition has been granted. A
notice has been sent to the last known address of the non-signing inventor.
The inventor whose signature is missing (Tage Kristensen) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is PCT/EP2010/055800
and was filed on 29 April 2010 in the name of Roberto Zapata et al for the
invention entitled "NETWORK IN WIND TURBINE". The national stage application
number is 13/266,088 and has a date of 25 April 2012 under 35 U.S.C.
371(c)(1), (c)(2), and (c)(4).
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of a national stage application with
a petition under 37 CFR 1.47 requesting acceptance of the application without
the signature of all inventors. The petition has been granted. A notice has
been sent to the last known addresses of the non-signing inventor. The
inventor whose signature is missing (James Metson) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is PCT/EP2009/008427
and was filed on 24 November 2009 in the names of Phillippe GAMBIER; Laurent
COQUILLEAU and James METSON for the invention entitled APPARATUS AND METHODS
FOR DEPLOYING CEMENTING PLUGS. The national stage application number is
13/130,182 and has a 35 U.S.C. 371 date of 07 December 2011.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all inventors. The petition has been granted. A notice has been
sent to the last known address of the non-signing inventor. The inventor
whose signature is missing (Robert Kulakowski) may join in the application
by promptly filing an appropriate oath or declaration complying with 37 CFR
1.63. The international application number is PCT/US08/085993 and was filed
on 08 December 2008 in the name of Neils J. Thorwirth, Robert Kulakowski and
Thomas Munro for the invention entitled SYSTEMS AND METHODS FOR PERFORMING
SEMANTIC ANALYSIS OF MEDIA OBJECTS. The national stage application number is
13/266,761.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of a joint inventor. The petition has been granted. A notice has
been sent to the last known address of the non-signing inventor. The inventor
whose signature is missing (Benedict Russell FREEMAN) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is PCT/GB2009/000404
and was filed on February 12, 2009. The inventors named during the
international phase were GEARS, Trevor, BOZ, Zafer, HOWE, Graham Ronald,
MEZZAROBBA, Emiliano, FREEMAN, Benedict Russell and BELL, Andrew Robert, for
the invention entitled COMMUNICATION SYSTEM. The national stage application
number is 12/864,846 and the application has a 35 U.S.C. 371(c)(1), (2) and
(4) date of November 19, 2010.

September 15, 2012 Deadline to File Requests for Inter Partes Reexamination Proceedings and Modification of Notice of Failure to Comply Form

DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2012-0036]
September 15, 2012 Deadline to File Requests for
Inter Partes Reexamination Proceedings and
Modification of Notice of Failure to Comply Form
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: Pursuant to section 6(c)(3) of the Leahy-Smith America Invents
Act (AIA), the authority to file inter partes reexamination requests
terminates effective September 16, 2012. Accordingly, any original or
corrected/replacement request for an inter partes reexamination
submitted on or after September 16, 2012, will not be accorded a filing
date, and any such request will not be granted. This notice provides
guidance to inter partes reexamination requesters with respect to timely
filing requests prior to September 16, 2012, i.e., by the September 15,
2012, last day for filing of an inter partes reexamination request.
FOR FURTHER INFORMATION CONTACT: Kenneth M. Schor, Senior Legal Advisor
((571) 272-7710), or Joseph F. Weiss, Jr., Legal Advisor ((571) 272-7759),
Office of Patent Legal Administration, Office of the Deputy Commissioner
for Patent Examination Policy.
SUPPLEMENTARY INFORMATION:
A. Filing Requests as Early as Possible
Requesters are advised to file any inter partes reexamination
requests which they intend to file as soon as possible, in order to
provide the United States Patent and Trademark Office (Office) with
maximum time to: (i) Receive, process, and review such requests for
their compliance with all the filing date requirements for inter partes
reexamination; and (ii) notify the requester of any deficiencies in the
request via a Notice of Failure to Comply with Inter Partes
Reexamination Request Filing Requirements (Notice of Failure to Comply)
while providing sufficient time for requester to submit a corrected/
replacement request prior to September 16, 2012.
In this regard, it is to be noted that any inter partes
reexamination request must meet all the filing date requirements for
inter partes reexamination, i.e., it must be filing-date compliant,
prior to September 16, 2012. If a timely filed inter partes
reexamination request fails to meet any filing date requirement for
inter partes reexamination, then the requester will be so notified and,
if time allows, given an opportunity to complete the request by filing
a corrected/replacement request by September 15, 2012. If the request
papers are then made filing-date compliant by a response which is
properly filed with the Office by September 15, 2012, the filing date
of the response will be assigned to the request (this is also true for
any sua sponte filed corrected/replacement request). If the corrected/
replacement request is not received by the Office as of September 15,
2012, the corrected/replacement request will not be accorded a filing
date, even though the original request was timely received by the
Office. This is so, regardless of when requester receives notification
that the original request is not filing-date compliant.
The Office will make every effort to promptly and efficiently
process and review all requests for inter partes reexamination. It is
to be emphasized, however, that the Office cannot guarantee that a
Notice of Failure to Comply with Inter Partes Reexamination Request
Filing Requirements will be issued by the Office prior to September 16,
2012, or even if it is so issued, that sufficient time will remain for
the mailing to reach a requester and allow for response prior to

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 379

September 16, 2012. While, traditionally, the Office has been setting a
thirty-day period to respond to the Notice of Failure to Comply, this
will no longer be possible for any Notice of Failure to Comply mailed
after August 16, 2012, because the statute which provides for the
filing of a request for inter partes reexamination will no longer be in
effect as of September 16, 2012.
In view of the above, potential inter partes reexamination
requesters are cautioned to file any such requests as soon as possible,
in order to provide the Office with as much time as possible to receive
the requests, process and review them, and notify requester with
sufficient time to correct the request, if necessary, prior to
September 16, 2012.
B. The Last Day to File an Inter Partes Reexamination Request
As mentioned above, section 6(c)(3) of the AIA statutorily
terminates the authority for inter partes reexamination filings
effective September 16, 2012. Since, inter partes reexamination filing
is not available on or after September 16, 2012, the Office cannot
grant a filing date to any inter partes reexamination request filed
after September 15, 2012. In addition, as the termination of authority
for inter partes reexamination filings in section 6(c)(3) of the AIA is
not a time period for taking action under 35 U.S.C. 21(b), the
provisions of 35 U.S.C. 21(b) do not authorize the Office to accept or
accord a filing date to an original or corrected/replacement request
for inter partes reexamination which is filed on or after September 16,
2012, even though September 15, 2012, the last day to file a request,
is a Saturday.
An inter partes reexamination request can be submitted on Saturday,
September 15, 2012, but only two methods are available to do so. The
request may be submitted that Saturday: (1) Via the Office's Web-based
electronic filing system, EFS-Web (see MPEP 502.05); or (2) by using
the 37 CFR 1.10 "Express Mail" mailing procedure (see MPEP 513). No
other method of submission is available for a Saturday. Thus, a request
cannot be submitted on September 15, 2012, by hand, by courier, by
facsimile transmission, or by mail other than Express Mail. If an
attempt to do so is made, the request will not be received by the
Office (on that Saturday), and a filing date will not be accorded to
the request.
If an original or corrected/replacement inter partes reexamination
request is mailed (by mail other than Express Mail), the requester
should take into consideration mailing time and the fact that 37 CFR
1.8 certificate of mailing and transmission procedures are not
available for filing an original or corrected/replacement request for
reexamination (see MPEP 2624). Thus, requester should take care to mail
the request sufficiently early for the Office to receive it by Friday,
September 14, 2012 (the Office does not receive mail on Saturday, the
15th - see 37 CFR 1.6(a)(1)).
C. Modification of Notice of Failure to Comply Form
In view of the above:
1. Any Notice of Failure to Comply mailed prior to September 15,
2012, will reference September 15, 2012, as the due date for any
corrected/replacement inter partes reexamination request.
2. Any Notice of Failure to Comply mailed on or after September 17,
2012, will not set a period for response, but will rather inform
requester that no filing date can be granted for the request, because
inter partes reexamination filing has been statutorily terminated.
August 23, 2012 TERESA STANEK REA
Deputy Under Secretary of Commerce for Intellectual Property and
Deputy Director of the United States Patent and Trademark Office

Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act

DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2012-0024]
Examination Guidelines for Implementing the
First-Inventor-to-File Provisions of the
Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
SUMMARY: The United States Patent and Trademark Office (Office) is
publishing proposed examination guidelines concerning the first-
inventor-to-file (FITF) provisions of the Leahy-Smith America Invents
Act (AIA). The AIA amends the patent laws pertaining to the conditions of
patentability to convert the United States patent system from a "first to
invent" system to a "first inventor to file" system, treats United States
patents and United States patent application publications as prior art
as of their earliest effective United States, foreign, or international
filing date, eliminates the requirement that a prior public use or sale
activity be "in this country" to be a prior art activity, and treats
commonly owned or joint research agreement patents and patent
application publications as being by the same inventive entity for
purposes of novelty, as well as nonobviousness. The changes to the
conditions of patentability in the AIA result in greater transparency,
objectivity, predictability, and simplicity in patentability
determinations. These guidelines will assist Office personnel in, and
inform the public of how the Office is, implementing the FITF
provisions of the AIA. The Office is concurrently proposing in a
separate action (RIN 0651-AC77) published elsewhere in this issue of
the Federal Register to amend the rules of practice in patent cases to
implement the FITF provisions of the AIA.
DATES: Written comments must be received on or before October 5, 2012.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: fitf_guidance@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Mary C. Till, Senior Legal Advisor, Office
of Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal, http://www.regulations.gov.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet in order to facilitate posting on the Office's Internet Web
site. Plain text is preferred, but comments may also be submitted in
ADOBE® portable document format or MICROSOFT WORD®
format. Comments not submitted electronically should be submitted on
paper, and will be digitally scanned into ADOBE® portable document format.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, currently located at Madison Building
East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments
also will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to be
made public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Mary C. Till, Senior Legal Advisor
(telephone (571) 272-7755; email mary.till@uspto.gov) or Kathleen
Kahler Fonda, Senior Legal Advisor (telephone (571) 272-7754; email

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 381

kathleen.fonda@uspto.gov), of the Office of the Deputy Commissioner for
Patent Examination Policy. Alternatively, mail may be addressed to Ms.
Till or Ms. Fonda at Commissioner for Patents, attn: FITF, P.O. Box
1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: The AIA \1\ was enacted into law on
September 16, 2011. Section 3 of the AIA amends the patent laws to:
(1) Convert the United States patent system from a "first to invent"
system to a "first inventor to file" system; (2) eliminate the
requirement that a prior public use or sale activity be "in this
country" to be a prior art activity; (3) treat U.S. patents and U.S.
patent application publications as prior art as of their earliest
effective filing date, regardless of whether the earliest effective
filing date is based upon an application filed in the U.S. or in
another country; and (4) treat commonly owned patents and patent
application publications, or those resulting from a joint research
agreement, as being by the same inventive entity for purposes of 35
U.S.C. 102 and 103. The changes in section 3 of the AIA take effect on
March 16, 2013.
\1\ Public Law 112-29, 125 Stat. 284 (2011).
These proposed guidelines do not constitute substantive rulemaking
and do not have the force and effect of law. The proposed guidelines
set out the Office's interpretation of 35 U.S.C. 102 and 103 as amended
by the AIA, and advise the public and the Patent Examining Corps on how
the changes to 35 U.S.C. 102 and 103 in the AIA impact the provisions
of the Manual of Patent Examining Procedure (MPEP) pertaining to 35
U.S.C. 102 and 103. The guidelines have been developed as a matter of
internal Office management and are not intended to create any right or
benefit, substantive or procedural, enforceable by any party against
the Office. Rejections will continue to be based upon the substantive
law, and it is these rejections that are appealable. Failure of Office
personnel to follow the guidelines is not, in itself, a proper basis
for either an appeal or a petition.
Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
The AIA replaces pre-AIA 35 U.S.C. 102 with provisions that: (1) A
person is not entitled to a patent if the claimed invention was
patented, described in a printed publication, or in public use, on
sale, or otherwise available to the public before the effective filing
date of the claimed invention (35 U.S.C. 102(a)(1)); and (2) a person
is not entitled to a patent if the claimed invention was described in a
patent issued under 35 U.S.C. 151, or in an application for patent
published or deemed published under 35 U.S.C. 122(b), in which the
patent or application, as the case may be, names another inventor, and
was effectively filed before the effective filing date of the claimed
invention (35 U.S.C. 102(a)(2)). In 35 U.S.C. 100(j), the AIA defines
the term "claimed invention" as the subject matter defined by a claim
in a patent or an application for a patent. The AIA defines the term
"effective filing date" for a claimed invention in a patent or
application for patent (other than a reissue application or reissued
patent) in 35 U.S.C. 100(i)(1) as meaning the earliest of: (1) The
actual filing date of the patent or the application for the patent
containing a claim to the claimed invention (claimed invention); or (2)
the filing date of the earliest provisional, nonprovisional,
international (PCT), or foreign patent application to which the patent
or application is entitled to benefit or priority as to such claimed
invention. Under pre-AIA 35 U.S.C. 102(a) and (b), knowledge or use of
the invention (pre-AIA 35 U.S.C. 102(a)), or public use or sale of the
invention (pre-AIA 35 U.S.C. 102(b)), was required to be in the United
States to qualify as a prior art activity. Under the AIA, a prior
public use, sale activity, or other disclosure has no geographic
requirement (i.e., need not be in the United States) to qualify as
prior art.

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 382

The "first inventor to file" provisions of the AIA eliminate the
provisions in pre-AIA 35 U.S.C. 102(c) (abandonment of the invention),
102(d) (premature foreign patenting), 102(f) (derivation), and 102(g)
(prior invention by another). Under AIA 35 U.S.C. 102, abandonment of
the invention or premature foreign patenting is not relevant to
patentability. Prior invention by another is not relevant to patentability
unless there is a prior disclosure or filing of an application by another.
The situation in which an application names a person who is not the actual
inventor as the inventor (pre-AIA 35 U.S.C. 102(f)) will be handled in a
derivation proceeding under 35 U.S.C. 135, by a correction of inventorship
under 37 CFR 1.48 to name the actual inventor, or under 35 U.S.C. 101.\2\
\2\ 35 U.S.C. 101 ("[w]hoever invents or discovers * * *, may
obtain a patent therefor, subject to the conditions and requirements
of this title); see also P.J. Federico, Commentary on the New Patent
Act, 75 J. Pat. & Trademark Off. Soc'y 161, 179 (1993) (noting that
pre-AIA 35 U.S.C. 102(f) is perhaps unnecessary since 35 U.S.C. 101
provides that ("[w]hoever invents or discovers * * *, may obtain a
patent therefor, subject to the conditions and requirements of this
title").
The AIA provides in 35 U.S.C. 102(b)(1) that a disclosure made one
year or less before the effective filing date of a claimed invention
shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the
claimed invention if: (1) The disclosure was made by the inventor or
joint inventor or by another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor; or (2)
the subject matter disclosed had, before such disclosure, been publicly
disclosed by the inventor or a joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. Thus, AIA 35 U.S.C. 102(b)(1) provides a
one-year grace period after a first disclosure of an invention within
which to file a patent application. Specifically, AIA 35 U.S.C.
102(b)(1) permits an applicant to disqualify a disclosure of the
invention made not more than one year before the effective filing date
of the claimed invention that would otherwise be prior art if: (1) The
disclosure to be disqualified was by an inventor or by a party who
obtained the disclosed subject matter from an inventor; or (2) an
inventor or a party who obtained the disclosed subject matter from an
inventor had publicly disclosed the subject matter before the date of
the reference disclosure to be disqualified. The one-year grace period
in AIA 35 U.S.C. 102(b)(1) is measured from the earliest U.S. or
foreign patent application to which the patent or application is
entitled to benefit or priority as to such invention, whereas the one-
year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the
earliest application filed in the United States.
AIA 35 U.S.C. 100(f) defines the term "inventor" as the
individual or if a joint invention, the individuals collectively who
invented or discovered the subject matter of the invention. AIA 35
U.S.C. 100(g) AIA defines the term "joint inventor" and "co-inventor"
to mean any one of the individuals who invented or discovered the subject
matter of a joint invention.
The date of invention is not relevant under AIA 35 U.S.C. 102.
Thus, a prior art disclosure could not be disqualified or antedated by
showing that the inventor invented the claimed invention prior to the
effective date of the prior art disclosure of the subject matter (e.g.,
under the provisions of 37 CFR 1.131).
In accordance with 35 U.S.C. 102(a)(2) of the AIA, a person is not
entitled to a patent if the claimed invention was described in a U.S.
patent or a U.S. patent application publication that names another
inventor and was effectively filed before the effective filing date of
the claimed invention. Under 35 U.S.C. 374, a World Intellectual
Property Organization (WIPO) publication of a Patent Cooperation Treaty
(PCT) international application that designates the United States is
deemed a U.S. patent application publication for purposes of AIA 35
U.S.C. 102(a)(2). Thus, under the AIA, WIPO publications of PCT

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 383

applications that designate the United States are treated in the same
way as U.S. patent application publications for prior art purposes,
regardless of the international filing date or whether they are
published in English. Accordingly, a U.S. patent, a U.S. patent
application publication, or a WIPO publication of a PCT application
that designates the United States (WIPO published application), that
names another inventor and was effectively filed before the effective
filing date of the claimed invention, is prior art under 35 U.S.C.
102(a)(2). Compare with treatment under pre-AIA 35 U.S.C. 102(e), where
a WIPO publication of a PCT application designating the United States
is treated as a U.S. patent application publication under pre-AIA 35
U.S.C. 102(e) only if the PCT application was filed on or after
November 29, 2000, and published under PCT Article 21(2) in the English
language.\3\
\3\ Under 35 U.S.C. 102(e) as amended by the American Inventors
Protection Act (Pub. L. 106-113) and the Intellectual Property and
High Technology Technical Amendments Act of 2002 (Pub. L. 107-273),
the international filing date of a PCT application is a U.S. filing
date for prior art purposes under 35 U.S.C. 102(e) if the international
application: (1) Has an international filing date on or after November 29,
2000; (2) designated the United States; and (3) is published under PCT
Article 21(2) in English. See MPEP § 706.02(f)(1). The AIA amends
35 U.S.C. 102, 363, and 374 to provide simply that the publication under
the PCT of an international application designating the United States shall
be deemed a publication under 35 U.S.C. 122(b).
In 35 U.S.C. 102(d), the AIA defines "effectively filed" for the
purpose of determining whether a U.S. patent, U.S. patent application
publication, or WIPO published application is prior art under 35 U.S.C.
102(a)(2) to a claimed invention. A U.S. patent, U.S. patent
application publication, or WIPO published application is considered to
have been effectively filed for purposes of its prior art effect under
35 U.S.C. 102(a)(2) with respect to any subject matter it describes on
the earlier of: (1) The actual filing date of the patent or the
application for patent; or (2) if the patent or application for patent
is entitled to claim the benefit or priority of the filing date of an
earlier U.S. provisional, U.S. nonprovisional, international (PCT), or
foreign patent application, the filing date of the earliest such
application that describes the subject matter of the claimed invention.
Thus, if the subject matter relied upon is described in the earliest
claimed benefit or priority application, a U.S. patent, a U.S. patent
application publication or WIPO published application is effective as
prior art as of its earliest benefit or priority date, rather than only
as of its earliest United States benefit date.
The AIA provides in 35 U.S.C. 102(b)(2)(A) and (B) that a disclosure
shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2)
if: (1) The subject matter disclosed was obtained directly or indirectly
from the inventor or a joint inventor; or (2) the subject matter disclosed
had, before such subject matter was effectively filed under 35 U.S.C.
102(a)(2), been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor. Thus, under the AIA, a U.S. patent,
U.S. patent application publication, or WIPO published application that was
not issued or published more than one year before the effective filing date
of the claimed invention is not prior art to the claimed invention if:
(1) The U.S. patent, U.S. patent application publication, or WIPO published
application was by a party who obtained the disclosed subject matter
from an inventor; or (2) an inventor, or a party who obtained the
disclosed subject matter from an inventor, had disclosed the subject
matter before the effective filing date of the U.S. patent, U.S. patent
application publication, or WIPO published application.
The AIA provides in 35 U.S.C. 102(b)(2)(C) that a disclosure made
in a U.S. patent, U.S. patent application publication, or WIPO
published application shall not be prior art to a claimed invention
under 35 U.S.C. 102(a)(2) if, not later than the effective filing date

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 384

of the claimed invention, the subject matter disclosed and the claimed
invention were owned by the same person or subject to an obligation of
assignment to the same person. This provision replaces the exception in
pre-AIA 35 U.S.C. 103(c) that applied only in the context of 35 U.S.C.
103 to prior art that was commonly owned at the time the claimed
invention was made, and which qualifies as prior art only under pre-AIA
35 U.S.C. 102(e), (f), or (g). AIA 35 U.S.C. 102(b)(2)(C) provides an
exception to prior art that qualifies only under 35 U.S.C. 102(a)(2)
but that applies in the context of anticipation or obviousness to prior
art that was commonly owned not later than the effective filing date of
the claimed invention.
Thus, the AIA provides that certain prior patents and patent
applications of co-workers and collaborators are not prior art either
for purposes of determining novelty (35 U.S.C. 102) or nonobviousness
(35 U.S.C. 103). This exception, however, applies only to AIA 35 U.S.C.
102(a)(2) type of prior art: Namely, U.S. patents, U.S. patent
application publications, or WIPO published applications effectively
filed, but not published, before the effective filing date of the
claimed invention. This exception does not apply to prior art that is
available under 35 U.S.C. 102(a)(1), that is, patents, printed
publications, public uses, sale activities, or other publicly available
disclosures published or occurring before the effective filing date of
the claimed invention. A prior disclosure, as defined in 35 U.S.C.
102(a)(1), by a co-worker or collaborator is prior art under 35 U.S.C.
102(a)(1) unless it falls within an exception under 35 U.S.C.
102(b)(1), regardless of whether the subject matter of the prior
disclosure and the claimed invention were commonly owned not later than
the effective filing date of the claimed invention.
The AIA provides in 35 U.S.C. 102(c) for common ownership of
subject matter under joint research agreements. Under 35 U.S.C. 100(h),
the term "joint research agreement" is defined as a written contract,
grant, or cooperative agreement entered into by two or more persons or
entities for the performance of experimental, developmental, or
research work in the field of the claimed invention. The AIA 35 U.S.C.
102(c) specifically provides that subject matter disclosed and a
claimed invention shall be deemed to have been owned by the same person
or subject to an obligation of assignment to the same person in
applying the provisions of AIA 35 U.S.C. 102(b)(2)(C) if: (1) The
subject matter disclosed was developed and the claimed invention was
made by, or on behalf of, one or more parties to a joint research
agreement that was in effect on or before the effective filing date of
the claimed invention; (2) the claimed invention was made as a result
of activities undertaken within the scope of the joint research
agreement; and (3) the application for patent for the claimed invention
discloses or is amended to disclose the names of the parties to the
joint research agreement.
The AIA provides in 35 U.S.C. 103 that a patent for a claimed
invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in 35 U.S.C. 102,
if the differences between the claimed invention and the prior art are
such that the claimed invention as a whole would have been obvious
before the effective filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed invention
pertains. 35 U.S.C. 103 also provides that patentability shall not be
negated by the manner in which the invention was made. This provision
tracks pre-AIA 35 U.S.C. 103(a), except that the temporal focus for the
obviousness inquiry is before the effective filing date of the claimed
invention, rather than at the time of the invention. The provisions of
pre-AIA 35 U.S.C. 103(c) have been replaced with 35 U.S.C. 102(b)(2)(C)
and (c), and the provisions of pre-AIA 35 U.S.C. 103(b) pertaining to
biotechnological processes have been eliminated.
The AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. These
new provisions apply to any patent application that contains or
contained at any time: (1) A claimed invention that has an effective
filing date that is on or after March 16, 2013; or (2) a designation as
a continuation, divisional, or continuation-in-part of an application

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 385

that contains or contained at any time a claimed invention that has an
effective filing date that is on or after March 16, 2013.\4\ The AIA 35
U.S.C. 102 and 103 also apply to any patent resulting from an
application to which the AIA 35 U.S.C. 102 and 103 applied.\5\
\4\ Public Law 112-29, § 3(n)(1), 125 Stat. at 293.
\5\ Id.
The AIA provides that the provisions of pre-AIA 35 U.S.C. 102(g)
\6\ apply to each claim of an application for patent if the patent
application: (1) Contains or contained at any time a claimed invention
having an effective filing date that occurs before March 16, 2013; or
(2) is ever designated as a continuation, divisional, or continuation-
in-part of an application that contains or contained at any time a
claimed invention that has an effective filing date before March 16,
2013.\7\ Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting
from an application to which pre-AIA 35 U.S.C. 102(g) applied.\8\
\6\ 35 U.S.C. 102(g) precludes the grant of a patent if:
(1) During the course of an interference conducted under 35 U.S.C. 135
or 291, another inventor involved therein establishes, to the extent
permitted in 35 U.S.C. 104, that before such person's invention thereof
the invention was made by such other inventor and not abandoned,
suppressed, or concealed, or (2) before such person's invention thereof,
the invention was made in this country by another inventor who had not
abandoned, suppressed, or concealed it.
\7\ Public Law 112-29, § 3(n)(2), 125 Stat. at 293.
\8\ Id.
Thus, if an application (1) contains or contained at any time any
claimed invention having an effective filing date that is before March
16, 2013, or ever claimed a right of priority or the benefit of an
earlier filing date under 35 U.S.C. 119, 120, 121, or 365 based upon an
earlier application ever containing a claimed invention having an
effective filing date that is before March 16, 2013, and (2) also
contains or contained at any time any claimed invention having an
effective filing date that is on or after March 16, 2013, or ever
claimed a right of priority or the benefit of an earlier filing date
under 35 U.S.C. 119, 120, 121, or 365 based upon an earlier application
ever containing a claimed invention having an effective filing date
that is on or after March 16, 2013, then AIA 35 U.S.C. 102 and 103
apply to the application, but each claimed invention is also subject to
pre-AIA 35 U.S.C. 102(g).
I. Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
The AIA defines in 35 U.S.C. 102(a) the prior art that will
preclude the grant of a patent on a claimed invention unless an
exception in 35 U.S.C. 102(b) is applicable. 35 U.S.C. 102(a)
specifically provides that "a person shall be entitled to a patent
unless -
(1) The claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available to the
public before the effective filing date of the claimed invention; or
(2) The claimed invention was described in a patent issued under
section 151, or in an application for patent published or deemed
published under section 122(b), in which the patent or application, as
the case may be, names another inventor and was effectively filed
before the effective filing date of the claimed invention." \9\
\9\ 35 U.S.C. 102(a).
As an initial matter, Office personnel should note that the
introductory phrase "[a] person shall be entitled to a patent unless"
remains unchanged from the pre-AIA version of 35 U.S.C. 102. Thus, 35

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 386

U.S.C. 102 continues to provide that the Office bears the initial
burden of explaining why the applicable statutory or regulatory
requirements have not been met if a claim in an application is to be
rejected. The AIA also does not change the requirement that in
rejecting any claim of an application, the Office must establish a
prima facie case of unpatentability.
The categories of prior art documents and events are set forth in
the AIA's 35 U.S.C. 102(a)(1) and (a)(2) and serve to qualify prior art
activities for purposes of determining whether a claimed invention is
novel or non-obvious. The documents upon which a prior art rejection
may be based are an issued patent, a published application, and a non-
patent printed publication. Evidence that the claimed invention was in
public use, on sale, or otherwise available to the public may also be
used as the basis for a prior art rejection. Note that a printed
publication that does not have a sufficiently early publication date to
itself qualify as prior art under 35 U.S.C. 102(a)(1) may still be
competent evidence of a previous public use, offer for sale, or other
availability of a claimed invention that does have a sufficiently early
date to qualify as prior art under 35 U.S.C. 102(a)(1).\10\
\10\ In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994).
The AIA in 35 U.S.C. 102(b) sets out exceptions to 35 U.S.C.
102(a), in that prior art that otherwise would be included in 35 U.S.C.
102(a) shall not be prior art if it falls within an exception in 35
U.S.C. 102(b).
35 U.S.C. 102(b)(1) provides exceptions to the categories of prior
art defined in 35 U.S.C. 102(a)(1). 35 U.S.C. 102(b)(1) specifically
states that a disclosure made one year or less before the effective
filing date of a claimed invention shall not be prior art to the
claimed invention under subsection (a)(1) if -
[ssquf] The disclosure was made by the inventor or joint inventor
or by another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor; or
[ssquf] The subject matter disclosed had, before such disclosure,
been publicly disclosed by the inventor or a joint inventor or another
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor." \11\
\11\ 35 U.S.C. 102(b)(1).
35 U.S.C. 102(b)(2) provides exceptions to the categories of prior
art defined in 35 U.S.C. 102(a)(2). 35 U.S.C. 102(b)(2) specifically
states that a disclosure shall not be prior art to a claimed invention
under subsection (a)(2) if -
[ssquf] The subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor;
[ssquf] The subject matter disclosed had, before such subject
matter was effectively filed under subsection (a)(2), been publicly
disclosed by the inventor or a joint inventor or another who obtained
the subject matter disclosed directly or indirectly from the inventor
or a joint inventor; or
[ssquf] The subject matter disclosed and the claimed invention, not
later than the effective filing date of the claimed invention, were
owned by the same person or subject to an obligation of assignment to
the same person." \12\
\12\ 35 U.S.C. 102(b)(2).
Although some of the prior art provisions of AIA 35 U.S.C. 102(a)
and (b) will seem familiar, especially in comparison to pre-AIA 35
U.S.C. 102(a), (b), and (e), the AIA has introduced a number of
important changes with respect to prior art documents and activities
(disclosures). First, the availability of a disclosure as prior art is
measured from the effective filing date of the claimed invention no
matter where that filing occurred. Second, the AIA adopts a global view

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 387

of prior art disclosures and thus does not require that a public use or
sale activity be "in this country" to be a prior art activity.
Finally, a catch-all "otherwise available to the public" category of
prior art is added.
DATES: Effective filing date: Pre-AIA 35 U.S.C. 102(a) and (e)
reference patent-defeating activities occurring before the applicant
invented the claimed invention. AIA 35 U.S.C. 102(a)(1) and (a)(2) make
no mention of the date of the invention, but instead concern documents
that existed or events that happened "before the effective filing date
of the claimed invention." As a result, it is no longer possible to
antedate or "swear behind" certain prior art disclosures by making a
showing under 37 CFR 1.131 that the applicant invented the claimed
subject matter prior to the effective date of the prior art disclosure.
The AIA defines the term "effective filing date" for a claimed
invention in a patent or application for patent (other than a reissue
application or reissued patent) as the earlier of: (1) The actual
filing date of the patent or the application for the patent containing
the claimed invention; or (2) the filing date of the earliest
application for which the patent or application is entitled, as to such
invention, to a right of priority or the benefit of an earlier filing
date under 35 U.S.C. 119, 120, 121, or 365.\13\ Thus, the one-year
grace period in AIA 35 U.S.C. 102(b)(1) is measured from any earlier
foreign patent application to which the patent or application is
entitled to benefit or priority as to such invention, whereas the one-
year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the
earliest application filed in the United States.
\13\ 35 U.S.C. 100(i)(1).
As under pre-AIA law, the effective filing date of a claimed
invention is determined on a claim-by-claim basis and not an
application-by-application basis. That is, the principle that different
claims in the same application may be entitled to different effective
filing dates vis-á-vis the prior art remains unchanged by the
AIA. See MPEP § 706.02(VI) (8th ed. 2001) (Rev. 8, July 2010).
Finally, the AIA provides that the "effective filing date" for a
claimed invention in a reissue patent or application for a reissue
patent shall be determined by deeming the claim to the claimed
invention to have been contained in the patent for which reissue was
sought.\14\
\14\ 35 U.S.C. 100(i)(2).
The meaning of "disclosure": The AIA does not define the term
"disclosure." In addition, while 35 U.S.C. 102(a) does not use the
term "disclosure," 35 U.S.C. 102(b)(1) and (b)(2) each state
conditions under which a "disclosure" that otherwise falls within 35
U.S.C. 102(a)(1) or 102(a)(2) is not prior art under 35 U.S.C.
102(a)(1) or 102(a)(2).\15\ Thus, the Office is treating the term
"disclosure" as a generic expression intended to encompass the
documents and activities enumerated in 35 U.S.C. 102(a) (i.e., being
patented, described in a printed publication, in public use, on sale,
or otherwise available to the public, or being described in a U.S. patent,
U.S. patent application publication, or WIPO published application).
\15\ See 35 U.S.C. 102(b)(1) ("[a] disclosure made one year or
less before the effective filing date of a claimed invention shall
not be prior art to the claimed invention under [35 U.S.C.
102](a)(1)") and 102(b)(2) ("[a] disclosure shall not be prior art
to a claimed invention under [35 U.S.C. 102](a)(2)"); see also H.R.
Rep. No. 112-98, at 43 (2011) (indicating that the grace period
provision of 35 U.S.C. 102(b) would apply to all patent applicant
actions during the grace period that would create prior art under 35
U.S.C. 102(a)).

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 388

A. Prior Art Under AIA 35 U.S.C. 102(a)(1)
35 U.S.C. 102(a)(1) sets forth prior documents and activities which
may preclude patentability. Such documents and activities include prior
patenting of the claimed invention, descriptions of the claimed
invention in a printed publication, public use of the claimed
invention, placing the claimed invention on sale, and otherwise making
the claimed invention available to the public.
Patented: AIA 35 U.S.C. 102(a)(1) indicates that prior patenting of
a claimed invention precludes the grant of a patent on the claimed
invention. This means that if a claimed invention was patented in this
or a foreign country before the effective filing date of the claimed
invention, 35 U.S.C. 102(a)(1) precludes the grant of a patent on the
claimed invention. The effective date of the patent for purposes of
prior art is the grant date of the patent for determining whether the
patent qualified as prior art under 35 U.S.C. 102(a)(1). There is an
exception to this rule if the patent is secret as of the date the
rights are awarded.\16\ In such situations, the patent is available as
prior art as of the date the patent was made available to the public by
being laid open for public inspection or disseminated in printed
form.\17\ The phrase "patented" in AIA 35 U.S.C. 102(a)(1) has the
same meaning as "patented" in pre-AIA 35 U.S.C. 102(a) and (b). For a
discussion of "patented" as used in pre-AIA 35 U.S.C. 102(a) and (b),
see generally MPEP § 2126.
\16\ In re Ekenstam, 256 F.2d 321 (CCPA 1958); see also MPEP
§ 2126.01.
\17\ In re Carlson, 983 F.2d 1032, 1037 (Fed. Cir. 1992); see
also MPEP § 2126.
Although an invention may be described in a patent and not claimed
therein, the grant date or publication date of the published
application would also be the applicable prior art date for purposes of
relying on the subject matter disclosed therein as "described in a
printed publication," provided that the patent was made available to
the public on its grant date. It is helpful to note that a U.S. patent
that issues after the effective filing date of the claimed invention is
not available as prior art under 35 U.S.C. 102(a)(1), but could be
available as prior art under 35 U.S.C. 102(a)(2).
Described in a printed publication: If a claimed invention is
described in a patent, published patent application, or printed
publication, such a document may be prior art under 35 U.S.C. 102(a)(1)
or (a)(2). Both pre-AIA 35 U.S.C. 102(a) and (b) and AIA 35 U.S.C.
102(a)(1) use the term "described" with respect to an invention in a
prior art printed publication. Likewise, AIA 35 U.S.C. 102(a)(2) uses
that term with respect to U.S. patents, U.S. patent application
publications, and WIPO published applications. Thus, the Office does
not view the AIA as changing the description requirement for a prior
art document to anticipate a claimed invention under 35 U.S.C. 102.
While the conditions for patentability of AIA 35 U.S.C. 112(a)
require a written description of the claimed invention that would have
enabled a person skilled in the art to make as well as use the
invention, the prior art provisions of 35 U.S.C. 102(a)(1) and (a)(2)
require only that the claimed invention be "described." \18\ The two
basic requirements that must be met by a prior art disclosure in order
to describe a claimed invention under AIA 35 U.S.C. 102 are the same as
those under pre-AIA 35 U.S.C. 102. First, "each and every element of
the claimed invention" must be disclosed either explicitly or
inherently, and the elements must be "arranged or combined in the same
way as in the claim." \19\ Second, a person of ordinary skill in the
art must have been enabled to make the invention without undue
experimentation.\20\ Thus, in order for a prior art disclosure to
describe a claimed invention under 35 U.S.C. 102(a), it must disclose
all elements of the claimed invention arranged as they are in the
claim, and also provide sufficient guidance to enable a person skilled
in the art to make the claimed invention. There is, however, no

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 389

requirement that a document meet the "how to use" requirement of 35
U.S.C. 112(a) in order to qualify as prior art.\21\ Furthermore,
compliance with the "how to make" requirement is judged from the
viewpoint of a person of ordinary skill in the art, and thus does not
require that the document explicitly disclose information within the
knowledge of such a person.\22\
\18\ Novo Nordisk Pharma., Inc. v. Bio-Tech. Gen. Corp., 424
F.3d 1347, 1355 (Fed. Cir. 2005), discussing pre-AIA 35 U.S.C. 112,
first paragraph, and pre-AIA 35 U.S.C. 102.
\19\ In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), citing
Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369,
1375 (Fed. Cir. 2006); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1370 (Fed. Cir. 2008); In re Bond, 910 F.2d 831, 832-33 (Fed.
Cir. 1990).
\20\ Gleave, 560 F.3d at 1334, citing Impax Labs., Inc. v.
Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); In re
LeGrice, 301 F.2d 929, 940-44 (CCPA 1962).
\21\ Gleave, 560 F.3d at 1334; see also In re Schoenwald, 964
F.2d 1122 (Fed. Cir. 1992) (holding that a claimed compound was
anticipated even though the prior art reference did not disclose a
use for the compound); Schering Corp. v. Geneva Pharms., Inc., 339
F.3d 1373, 1380-81 (Fed. Cir. 2003) (pointing out that actually
reducing the invention to practice is not necessary in order for a
prior art reference to anticipate); Impax Labs. Inc. v. Aventis
Pharm.Inc., 468 F.3d 1366, 1383 (Fed. Cir. 2006) (stating that
"proof of efficacy is not required for a prior art reference to be
enabling for purposes of anticipation").
\22\ In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985).
There is an additional important distinction between the written
description that is necessary to support a claim under 35 U.S.C. 112(a)
and the description sufficient to anticipate the subject matter of the
claim under 35 U.S.C. 102.\23\ To provide support for a claim under 35
U.S.C. 112(a), it is necessary that the specification describe and
enable the entire scope of the claimed invention. However, in order for
a prior art disclosure to describe a claimed invention under 35 U.S.C.
102(a)(1) or (a)(2), a prior art document need only describe and enable
one skilled in the art to make a single species or embodiment of the
claimed invention.\24\ This is consistent with pre-AIA case law.
\23\ Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed.
Cir. 2005).
\24\ Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir.
1991) ("As the court pointed out, `the description of a single
embodiment of broadly claimed subject matter constitutes a
description of the invention for anticipation purposes * * *,
whereas the same information in a specification might not alone be
enough to provide a description of that invention for purposes of
adequate disclosure.' ") (quoting In re Lukach, 442 F.2d 967 (CCPA
1971)); see also In re Van Langenhoven, 458 F.2d 132 (CCPA 1972),
and In re Ruscetta, 255 F.2d 68 (CCPA 1958).
In public use: The pre-AIA case law indicates that a public use
will bar patentability if the public use occurs before the critical
date \25\ and the invention is ready for patenting.\26\ Under the pre-
AIA case law, the inquiry was whether the use was: (1) Accessible to
the public; and (2) commercially exploited. The phrase "in public
use" in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning
as "in public use" in pre-AIA 35 U.S.C. 102(b). For a discussion of
"in public use" in pre-AIA 35 U.S.C. 102(b), see generally MPEP
§ 2133.03(a) et seq.
\25\ Under pre-AIA 35 U.S.C. 102(b), the critical date is the
date that is one year prior to the date of application for patent in
the United States.

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 390

\26\ Invitrogen Corp. v. Biocrest Mfg. L.P., 424 F.3d 1374 (Fed.
Cir. 2005).
Additionally, under pre-AIA 35 U.S.C. 102(b), that an invention was
"in public use" precluded a patent only if such public use occurred "in
this country." \27\ Under AIA 35 U.S.C. 102(a)(1), there is no geographic
limitation on the location where a prior public use or public availability
may occur. Furthermore, a public use would need to occur before the
effective filing date of the claimed invention to constitute prior art
under AIA 35 U.S.C. 102(a)(1). When formulating a rejection, Office
personnel should consider evidence of public use or other public
availability regardless of where the public use or other public
availability took place.
\27\ Similarly, under pre-AIA 35 U.S.C. 102(a), that an
invention was "known or used by others" precluded a patent only if
such knowledge or use occurred "in this country."
On sale: The pre-AIA case law regarding on sale activity indicates
that a sale will bar patentability of the invention if the sale of the
claimed invention was: (1) The subject of a commercial offer for sale,
not primarily for experimental purposes; and (2) ready for
patenting.\28\ With respect to a sale, contract law principles apply in
order to determine whether a commercial offer for sale occurred. The
phrase "on sale" in AIA 35 U.S.C. 102(a)(1) is treated as having the
same meaning as "on sale" in pre-AIA 35 U.S.C. 102(b), except as
discussed in this guidance. For a discussion of "on sale" as used in
pre-AIA 35 U.S.C. 102(b), see generally MPEP § 2133.03(b) et seq.
\28\ Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).
Under pre-AIA 35 U.S.C. 102(b), if an invention was "on sale"
patentability was precluded only if the invention was on sale "in this
country." Under AIA 35 U.S.C. 102(a)(1), there is no geographic
limitation on the location where the sale may occur. When formulating a
rejection, Office personnel should consider evidence of sales activity
of the claimed invention, regardless of where the sale took place.
The language of AIA 35 U.S.C. 102(a)(1) does not expressly state
whether a sale must be "sufficiently" public to preclude the grant of
a patent on the claimed invention.\29\ The Office is seeking the
benefit of public comment on this provision prior to issuing its
interpretation of the AIA 35 U.S.C. 102(a)(1) "on sale" provision and
is not setting out an initial position in this guidance to avoid having
an influence on the comments. Specifically, the Office is seeking
comment on the extent to which public availability plays a role in "on
sale" prior art defined in 35 U.S.C. 102(a)(1).
\29\ AIA 35 U.S.C. 102(a)(1) uses the same term ("on sale") as
pre-AIA 35 U.S.C. 102(b). The pre-AIA 35 U.S.C. 102(b) "on sale"
provision has been interpreted as including commercial activity even
if the activity is secret or private. See, e.g., Metallizing
Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d
Cir. 1946). However, 35 U.S.C. 102(a)(1), unlike pre-AIA 35 U.S.C.
102(b), contains the residual clause "or otherwise available to the
public." See 35 U.S.C. 102(a)(1). The legislative history of the
AIA indicates that the inclusion of this clause in AIA 35 U.S.C.
102(a)(1) should be viewed as indicating that AIA 35 U.S.C.
102(a)(1) does not cover non-public uses or non-public offers for
sale. See 157 Cong. Rec. S.1370 (Mar. 8, 2011) (The Committee's
understanding of the effect of adding the words `or otherwise
available to the public' is confirmed by judicial construction of
this phraseology. Courts have consistently found that when the words
`or otherwise' or `or other' when used as a modifier at the end of a
string of clauses restricts the meaning of the preceding clauses.).
Otherwise available prior art: The AIA in 35 U.S.C. 102(a)(1)

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 391

provides a "catch-all" provision, which defines a new additional
category of potential prior art not provided for in pre-AIA 35 U.S.C.
102. Specifically, a claimed invention may not be patented if it was
"otherwise available to the public" before its effective filing date.
This "catch-all" provision permits decision makers to focus on
whether the disclosure was "available to the public," rather than on
the means by which the claimed invention became available to the public
or on whether a disclosure constitutes a "printed publication" or
falls within another category of prior art as defined in 35 U.S.C.
102(a)(1). The availability of the subject matter to the public may
arise in situations such as a student thesis in a university
library,\30\ a poster display or other information disseminated at a
scientific meeting,\31\ subject matter in a laid-open patent
application,\32\ a document electronically posted on the Internet,\33\
or a commercial transaction that does not constitute a sale under the
Uniform Commercial Code.\34\ Even if a document or other disclosure is
not a printed publication, or a transaction is not a sale, either may
be prior art under the "otherwise available" provision of 35 U.S.C.
102(a)(1), provided that the claimed invention is made sufficiently
available to the public.
\30\ E.g, In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989); In re
Hall, 781 F.2d 897 (Fed. Cir. 1986); In re Bayer, 568 F.2d 1357
(CCPA 1978).
\31\ E.g., In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir.
2004), Massachusetts Institute of Technology v. AB Fortia, 774 F.2d
1104 (Fed. Cir. 1985).
\32\ E.g., In re Wyer, 655 F.2d 221 (CCPA 1981); see also
Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006).
\33\ E.g., In re Lister, 583 F.3d 1307 (Fed. Cir. 2009), and SRI
International, Inc. v. Internet Security Systems, Inc., 511 F.3d
1186 (Fed. Cir. 2008).
\34\ E.g., Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d
1041 (Fed. Cir. 2001).
No requirement of "by others": A key difference between pre-AIA
35 U.S.C. 102(a) and AIA 35 U.S.C. 102(a)(1) is the requirement in pre-
AIA 35 U.S.C. 102(a) that the prior art relied on was "by others."
Under 35 U.S.C. 102(a)(1), there is no requirement that the prior art
relied upon be by others. Thus, any prior art which falls under 35
U.S.C. 102(a)(1) need not be by another to constitute potentially
available prior art. However, disclosures of the subject matter made
one year or less before the effective filing date of the claimed
invention by the inventor or a joint inventor or another who obtained
the subject matter directly or indirectly from the inventor or a joint
inventor may fall within an exception under 35 U.S.C. 102(b)(1) to 35
U.S.C. 102(a)(1).
Admissions: The Office will continue to treat admissions by the
applicant as prior art under the AIA. A statement by an applicant in
the specification or made during prosecution identifying the work of
another as "prior art" is an admission which can be relied upon for
both anticipation and obviousness determinations, regardless of whether
the admitted prior art would otherwise qualify as prior art under the
statutory categories of 35 U.S.C. 102.\35\ See generally MPEP § 2129.
\35\ Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346,
1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848
F.2d 1560, 1570 (Fed. Cir. 1988).
1. Prior Art Exception Under 35 U.S.C. 102(b)(1)(A) to 35 U.S.C.
102(a)(1)
The AIA in 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior
art provisions of 35 U.S.C. 102(a)(1). These exceptions limit the use
of an inventor's own work as prior art, when the inventor has publicly
disclosed the work either directly or indirectly. The provisions of 35
U.S.C. 102(b)(1)(A) indicate that a disclosure which would otherwise

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 392

qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the
disclosure was made: (1) One year or less before the effective filing
date of the claimed invention; and (2) by the inventor or a joint
inventor, or by another who obtained the subject matter directly or
indirectly from the inventor or joint inventor. These guidelines will
first discuss issues pertaining to disclosures within the grace period
by the inventor or a joint inventor ("grace period inventor
disclosure") and then subsequently discuss issues pertaining to
disclosures within the grace period by another who obtained the subject
matter directly or indirectly from the inventor or joint inventor
("grace period non-inventor inventor disclosure").
Grace period inventor disclosure: 35 U.S.C. 102(b)(1)(A) first
provides that a disclosure which would otherwisequalify as prior art under
35 U.S.C. 102(a)(1) is not prior art if: (1) The disclosure is made one
year or less before the effective filing date of the claimed invention; and
(2) was made by the inventor or a joint inventor. Thus, a disclosure that
would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) shall not be
prior art if the disclosure is made one year or less before the effective
filing date of the claimed invention, and the written record of the patent
application shows that the disclosure is by the inventor or a joint
inventor. What is necessary to show that the disclosure is by the inventor
or a joint inventor requires case-by-case treatment, depending upon whether
it is apparent from the disclosure or the patent application specification
that the disclosure is by the inventor or a joint inventor.
An examiner would not apply prior art that falls under 35 U.S.C.
102(a)(1) if it is apparent from the disclosure that it is by the
inventor or a joint inventor. Specifically, the examiner would not
apply a prior art disclosure that falls under 35 U.S.C. 102(a)(1) if
the disclosure: (1) Was made one year or less before the effective
filing date of the claimed invention; (2) names the inventor or a joint
inventor as an author or an inventor; and (3) does not name additional
persons as authors on a printed publication or inventors on a patent.
This means that in circumstances where an application names additional
persons as inventors relative to the persons named as authors in the
publication (e.g., the application names as inventors A, B, and C, and
the publication names as authors A and B), and the publication is one
year or less before the effective filing date, it is apparent that the
disclosure is a grace period inventor disclosure, and the publication
would not be treated as prior art under 35 U.S.C. 102(a)(1). If,
however, the application names fewer inventors than a publication
(e.g., the application names as inventors A and B, and the publication
names as authors A, B and C), it would not be readily apparent from the
publication that it is by the inventor or a joint inventor and the
publication would be treated as prior art under 35 U.S.C. 102(a)(1).
In certain circumstances, an examiner would not apply prior art
that falls under 35 U.S.C. 102(a)(1) if it is apparent from the patent
application specification that the disclosure is by the inventor or a
joint inventor. The Office is concurrently proposing in a separate
action (RIN 0651-AC77) to revise the rules of practice to provide that
applicants can include a statement of any grace period inventor
disclosures in the specification (in proposed 37 CFR 1.77(b)). If the
specification contains a specific reference to a grace period inventor
disclosure, the Office will consider it apparent from the patent
application specification that the disclosure is by the inventor or a
joint inventor, provided that the disclosure does not name additional
authors or inventors and there is no other evidence to the contrary.
The applicant may also provide a copy of the disclosure (e.g., copy of
a printed publication), and will be required to provide a copy of the
disclosure to disqualify an intervening disclosure under the provisions
of 35 U.S.C. 102(b)(1)(B) (discussed subsequently).
An applicant is not required to use the format specified in
proposed 37 CFR 1.77 or identify any prior disclosures by the inventor
or a joint inventor (unless necessary to overcome a rejection), but
identifying any prior disclosures by the inventor or a joint inventor
may save applicants (and the Office) the costs related to an Office
action and reply, and expedite examination of the application. In this

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 393

situation, the Office would consider such a disclosure made one year or
less before the effective filing date of the claimed invention as
falling within the 35 U.S.C. 102(b)(1)(A) exception, and the disclosure
would not be treated as prior art under 35 U.S.C. 102(a)(1).
The Office is proposing in a separate action (RIN 0651-AC77)
elsewhere in this issue of the Federal Register to revise the rules of
practice to provide for situations in which it is not apparent from the
disclosure or the patent application specification that the disclosure
is by the inventor or a joint inventor (proposed 37 CFR 1.130).
Proposed 37 CFR 1.130 would generally provide a mechanism for filing an
affidavit or declaration to establish that a disclosure is not prior
art under 35 U.S.C. 102(a) due to an exception in 35 U.S.C. 102(b).
Proposed 37 CFR 1.130(a)(1) would provide for the situation in which:
(1) The disclosure on which the rejection is based was by the inventor
or joint inventor; (2) the subject matter disclosed had been publicly
disclosed by the inventor or a joint inventor before the disclosure of
the subject matter on which the rejection is based; or (3) the subject
matter disclosed had been publicly disclosed by the inventor or a joint
inventor before the date the subject matter in the patent or published
application on which the rejection is based was effectively filed.
An affidavit or declaration under proposed 37 CFR 1.130(a)(1) could
be used to establish that the prior art relied upon in a rejection is
an inventor disclosure made during the grace period and subject to the
exception of 35 U.S.C. 102(b)(1)(A). Specifically, such an affidavit or
declaration could be used to establish that the disclosure upon which
the rejection is based: (1) Was made one year or less before the
effective filing date of the claimed invention; and (2) had been
publicly disclosed by the inventor or joint inventor. The affidavit or
declaration must show that the disclosure of the subject matter on
which the rejection is based is by the inventor or is by a joint
inventor.\36\ Where the authorship of the prior art disclosure includes
the inventor or a joint inventor named in the application, an
"unequivocal" statement from the inventor or a joint inventor that
he/she (or some specific combination of named inventors) invented the
subject matter of the disclosure, accompanied by a reasonable
explanation of the presence of additional authors, may be acceptable in
the absence of evidence to the contrary.\37\ However, a mere statement
from the inventor or a joint inventor may not be sufficient where there
is evidence to the contrary.\38\ This is similar to the current process
for disqualifying a publication as not being by "others" discussed in
MPEP § 2132.01, except that 35 U.S.C. 102(b)(1)(A) requires only that the
disclosure be by the inventor or a joint inventor.
\36\ In re Katz, 687 F.2d 450, 455 (CCPA 1982).
\37\ In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
\38\ Ex parte Kroger, 218 USPQ 370 (Bd. App. 1982) (affirming
rejection notwithstanding declarations by the alleged actual
inventors as to their inventorship in view of a nonapplicant author
submitting a letter declaring the nonapplicant author's
inventorship).
Grace period non-inventor disclosure: 35 U.S.C. 102(b)(1)(A) also
provides that a disclosure which would otherwise qualify as prior art
under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made:
(1) One year or less before the effective filing date of the claimed
invention; and (2) by another who obtained the subject matter directly
or indirectly from the inventor or a joint inventor. Thus, if the
disclosure upon which the rejection is based is by someone who obtained
the subject matter from the inventor or a joint inventor, the inventor
could provide an affidavit or declaration which may overcome the
rejection.
As discussed previously, proposed 37 CFR 1.130 would generally
provide a mechanism for filing an affidavit or declaration to establish
that a disclosure is not prior art due to an exception in AIA 35 U.S.C.
102(b). Proposed 37 CFR 1.130(a)(2) provides for the situation in
which: (1) The disclosure on which therejection is based was by a party

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 394

who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor; (2) the subject matter disclosed had been
publicly disclosed by a party who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor before the
disclosure of the subject matter on which the rejection is based; or
(3) the subject matter disclosed had been publicly disclosed by a party
who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor before the date the subject matter in the
patent or patent application publication on which the rejection is based
was effectively filed.
Proposed 37 CFR 1.130(a)(2) thus provides for an affidavit or
declaration to establish that the named inventor or joint inventor is
the inventor of the disclosed subject matter, and that the subject
matter was communicated by the inventor or a joint inventor to another
who disclosed it. Such an affidavit or declaration must show that the
inventor or a joint inventor is the inventor of the subject matter of
the disclosure (in accordance with proposed 37 CFR 1.130(d)), and
indicate the communication of the subject matter by the inventor or a
joint inventor to another who disclosed the subject matter. Thus, an
applicant may benefit from the earlier disclosure by another during the
grace period, if the applicant can establish that the inventor or a
joint inventor is the actual inventor of the subject matter of the
disclosure and that the subject matter was obtained directly or
indirectly from the inventor or a joint inventor. Specifically, the
applicant must show that a named inventor actually invented the subject
matter of the disclosure.\39\ The applicant must also show a
communication of the subject matter of the disclosure sufficient to
enable one of ordinary skill in the art to make the subject matter of
the claimed invention.\40\ Any documentation which provides evidence of
the communication of the subject matter by the inventor or a joint
inventor to the entity that earlier disclosed the subject matter should
accompany the affidavit or declaration. This is similar to the current
process for disqualifying a publication as being derived from the
inventor discussed in MPEP §§ 715.01(c) II and 2137.
\39\ In re Facius, 408 F.2d 1396, 1407 (CCPA 1969).
\40\ Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573,
1577 (Fed. Cir. 1997).
2. Prior Art Exception Under 35 U.S.C. 102(b)(1)(B) to 35 U.S.C. 102(a)(1)
The AIA in 35 U.S.C. 102(b)(1)(B) provides additional exceptions to
the prior art provisions of 35 U.S.C. 102(a)(1). These exceptions
disqualify a disclosure that occurs after a public disclosure by the
inventor, joint inventor, or another who obtained the subject matter
directly or indirectly from the inventor or joint inventor. The
provisions of 35 U.S.C. 102(b)(1)(B) indicate that a disclosure which
would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not
prior art if the disclosure was made: (1) One year or less before the
effective filing date of the claimed invention; and (2) after a public
disclosure of the subject matter of the disclosure which would
otherwise qualify as prior art under 35 U.S.C. 102(a)(1) by the
inventor or a joint inventor or another who obtained the subject matter
directly or indirectly from the inventor or a joint inventor.
The exception in 35 U.S.C. 102(b)(1)(B) applies if the "`subject
matter' disclosed [in the prior art disclosure] had, before such [prior
art] disclosure, been publicly disclosed by the inventor or a joint
inventor * * * ." \41\ Thus, the exception in 35 U.S.C. 102(b)(1)(B)
requires that the subject matter in the prior disclosure being relied
upon under 35 U.S.C. 102(a) be the same "subject matter" as the
subject matter publicly disclosed by the inventor before such prior art
disclosure for the exception in 35 U.S.C. 102(b)(1)(B) to apply. Even
if the only differences between the subject matter in the prior art
disclosure that is relied upon under 35 U.S.C. 102(a) and the subject
matter publicly disclosed by the inventor before such prior art
disclosure are mere insubstantial changes, or only trivial or obvious
variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 395

\41\ 35 U.S.C. 102(b)(1)(B).
Grace period intervening disclosure exception: Under this
exception, potential prior art under 35 U.S.C. 102(a)(1) is not prior
art if the patent, printed publication, public use, sale, or other
means of public availability was made: (1) One year or less before the
effective filing date of the claimed invention; and (2) after a "grace
period inventor disclosure" or a "grace period non-inventor disclosure"
as those terms have been discussed previously.
An affidavit or declaration under 37 CFR 1.130(a)(1) could be used
to establish that the subject matter disclosed had been publicly
disclosed by the inventor or a joint inventor before the disclosure of
the subject matter on which the rejection is based. Such an affidavit
or declaration under 37 CFR 1.130(a)(1) must establish that the subject
matter disclosed in the cited prior art had been publicly disclosed by
the inventor or a joint inventor before the disclosure of the subject
matter on which the rejection is based. Specifically, the inventor or
joint inventor must establish the date and content of their earlier
public disclosure. If the earlier disclosure was a printed publication,
the affidavit or declaration must be accompanied by a copy of the
printed publication. If the earlier disclosure was not a printed
publication, the affidavit or declaration must describe the earlier
disclosure with sufficient detail and particularity to determine that
the earlier disclosure is a public disclosure of the subject matter.
Alternatively, as discussed previously, an affidavit or declaration
under 37 CFR 1.130(a)(2) could establish that the subject matter
disclosed had been publicly disclosed by a party who obtained the
subject matter directly or indirectly from the inventor or a joint
inventor before the disclosure of the subject matter on which the
rejection is based. Such an affidavit or declaration under 37 CFR
1.130(a)(2) must establish that the subject matter disclosed in the
cited prior art had been publicly disclosed by another who obtained the
subject matter disclosed directly or indirectly from the inventor or a
joint inventor before the disclosure of the subject matter on which the
rejection is based. The affidavit or declaration must specifically show
that the inventor or a joint inventor is the inventor of the subject
matter of the earlier public disclosure and indicate the communication
of the subject matter to another who disclosed the subject matter. As
discussed previously, this is similar to the current process for
disqualifying a publication as being derived from the inventor
discussed in MPEP section 2137.
Such an affidavit or declaration under 37 CFR 1.130(a)(2) must also
establish the date and content of the earlier public disclosure which
was made by another who obtained the subject matter directly or
indirectly from the inventor or joint inventor. If the earlier
disclosure was a printed publication, the affidavit or declaration must
be accompanied by a copy of the printed publication. If the earlier
disclosure was not a printed publication, the affidavit or declaration
must describe the earlier disclosure with sufficient detail and
particularity to determine that the earlier disclosure is a public
disclosure of the subject matter. Any documentation which provides evidence
of the public availability of a non-printed publication prior art and any
documentation which provides evidence of the communication of the
subject matter by the inventor or a joint inventor to the entity that
disclosed the subject matter should accompany the affidavit or
declaration.
B. Prior Art Under AIA 35 U.S.C. 102(a)(2)
AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents
that are available prior art as of the date they were effectively filed
with respect to the subject matter relied upon in the document: (1)
U.S. patents; (2) U.S. patent application publications; and (3) WIPO
published applications. These documents may have different prior art
effects under pre-AIA 35 U.S.C. 102(e) and AIA 35 U.S.C. 102(a)(2).

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 396

A U.S. patent, U.S. patent application publication, or WIPO
published application is prior art under 35 U.S.C. 102(a)(1) if its
issue or publication date is before the effective filing date of the
claim at issue. If the issue date of the U.S. patent or publication
date of the U.S. patent application publication or WIPO published
application is not before the effective filing date of the claimed
invention, it may still be applicable as prior art under 35 U.S.C.
102(a)(2) if it was "effectively filed" before the effective filing
date of the claim at issue with respect to the subject matter relied
upon to reject the claim. AIA 35 U.S.C. 102(d) sets forth when subject
matter described in a U.S. patent, U.S. patent application publication,
or WIPO published application was "effectively filed" for purposes of
35 U.S.C. 102(a)(2).
1. Determining When Subject Matter Was Effectively Filed Under 35
U.S.C. 102(d)
35 U.S.C. 102(d) provides the criteria to determine the date that a
U.S. patent, U.S. patent application publication, or WIPO published
application was "effectively filed" with respect to the subject
matter described in the patent or published application for purposes of
constituting prior art under 35 U.S.C. 102(a)(2).
Under 35 U.S.C. 102(d), a U.S. patent, U.S. patent application
publication, or WIPO published application is prior art under 35 U.S.C.
102(a)(2) with respect to any subject matter described in the patent or
published application as of either its actual filing date (35 U.S.C.
102(d)(1)), or the filing date of a prior application to which there is
a priority or benefit claim (35 U.S.C. 102(d)(2)). A U.S. patent, U.S.
patent application publication, or WIPO published application "is
entitled to claim" priority to, or the benefit of, a prior-filed
application if it fulfills the ministerial requirements of: (1)
Containing a priority or benefit claim to the prior-filed application;
(2) being filed within the applicable filing period requirement
(copending with or within twelve months of the earlier filing, as
applicable); and (3) having a common inventor or being by the same
applicant.\42\
\42\ See 157 Cong. Rec. S.1370 (Mar. 8, 2011) (distinguishing
between the core requirement that the prior-filed application
include an enabling disclosure and the ministerial requirements that
the applications be copendent and specifically referenced); see also
MPEP § 201.08 (permitting a claim to the benefit of a prior-
filed application in a continuation-in-part application provided
that the continuation-in-part application has a common inventor, has
copendency with the prior-filed application, and includes a specific
reference to the prior-filed application, regardless of whether the
prior-filed application contains support under 35 U.S.C. 112 for any
claim in the continuation-in-part application).
The AIA draws a distinction between actually being entitled to
priority to, or the benefit of, a prior-filed application in the
definition of effective filing date in 35 U.S.C. 100(i)(2), and merely
being entitled to claim priority to, or the benefit of, a prior-filed
application in the definition of effectively filed in 35 U.S.C.
102(d).\43\ As a result of this distinction, the question of whether a
patent or published application is actually entitled to priority or
benefit with respect to any of its claims is not at issue in
determining the date the patent or published application was
"effectively filed" for prior art purposes.\44\ Thus, there is no
need to evaluate whether any claim of a U.S. patent, U.S. patent
application publication, or WIPO published application is actually
entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365
when applying such a document as prior art.
\43\ The legislative history of the AIA discusses an important
distinction between ministerial entitlement to make a priority or
benefit claim, and actual legal entitlement to the priority or

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 397

benefit: In section 100(i), which defines the effective filing date
of the patent under review, the patent must be entitled to the
priority or benefit itself under the relevant sections. Here again
in section 102(d), however, the application need only be entitled to
claim the benefit or priority under those sections. This difference
in language distinguishes between the core requirement of section
120 et al. - that the application include an enabling disclosure - and
the ministerial requirements of that section - that the application
be copendent and specifically referenced. In effect, an application
that meets the ministerial requirements of copendency and specific
reference is entitled to claim the benefit or priority, but only an
application that also offers an enabling disclosure is actually
entitled to the benefit or priority itself. See 157 Cong. Rec.
S.1370 (Mar. 8, 2011).
\44\ In re Wertheim, 646 F.2d 527 (CCPA 1981), which relies upon
Alexander Milburn Co. v. Davis-Bournonville, 270 U.S. 390 (1926),
for its conclusion that the patent must actually be entitled to the
benefit of the prior-application for any subject matter in the
patent to have a prior art date under 35 U.S.C. 102(e) as of the
filing date of the prior application. The legislative history of the
AIA indicates that: Paragraph (2) [of AIA 102(d)] is intended to
overrule what remains of In re Wertheim, 646 F.2d 527 (CCPA 1981),
which appeared to hold that only an application that could have
become a patent on the day that it was filed can constitute prior
art against another application or patent. See 157 Cong. Rec.
S.1369-70 (Mar. 8, 2011). The Office has previously indicated that
the reasoning of In re Wertheim, 646 F.2d 527 (CCPA 1981), did not
survive the amendment to 35 U.S.C. 102(e) in the American Inventors
Protection Act. See, e.g, Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606
(Bd. Pat. App. & Inter. 2008). In In re Giacomini, 612 F.3d 1380
(Fed. Cir. 2010), the U.S. Court of Appeals for the Federal Circuit
(Federal Circuit) held that a patent was effective as prior art as
of the filing date of a provisional application claimed under 35
U.S.C. 119(e).
35 U.S.C. 102(d) does require that the prior-filed application to
which a priority or benefit claim is made describe the subject matter
from the U.S. patent, U.S. patent application publication, or WIPO
published application relied upon in a rejection for that subject
matter. However, 35 U.S.C. 102(d) does not require that this
description meets the requirements of 35 U.S.C. 112(a). As discussed
previously with respect to 35 U.S.C. 102(a), the Office views the
description requirement as being the same as the pre-AIA description
requirement for a prior art disclosure of an invention.
Another important consequence of 35 U.S.C. 102(d) is its impact on
the vitality of the so-called Hilmer doctrine.\45\ Under the Hilmer
doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective filing date
for U.S. patents (and published applications) as prior art to their
earliest United States filing date. In contrast, AIA 35 U.S.C. 102(d)
provides that if the U.S. patent, U.S. patent application publication,
or WIPO published application claims priority to prior-filed foreign or
international application under 35 U.S.C. 119 or 365, the patent or
published application was effectively filed on the filing date of the
earliest such application that describes the subject matter.\46\
Therefore, if the subject matter relied upon is described
in the application to which there is a priority or benefit claim, a
U.S. patent, a U.S. patent application publication, or WIPO published
application is effective as prior art as of the filing date of the
earliest such application, regardless of where filed, rather than only
as of its earliest United States benefit date.
\45\ In In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966),
the CCPA held that reliance on the foreign priority date of a
reference applied in a rejection under pre-AIA 35 U.S.C. 102(e) was
improper.
\46\ When examining an application to which the changes in 35

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 398

U.S.C. 102 and 103 do not apply, Office personnel will continue to
apply the Hilmer doctrine, and foreign priority dates may not be
used in determining 35 U.S.C.102(e) prior art dates. Note that the
international filing date of a PCT application may be the 35
U.S.C.102(e) prior art date under pre-AIA law under certain
circumstances. See MPEP § 706.02(f).).
Requirement of "names another inventor": To qualify as prior art
under 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. patent
application publication, or WIPO published application must "name[s]
another inventor." This means that if there is any difference in
inventive entity between the prior art U.S. patent, U.S. patent
application publication, or WIPO published application and the
application under examination or patent under reexamination, the U.S.
patent, U.S. patent application publication, or WIPO published
application satisfies the "names another inventor" provision of 35
U.S.C. 102(a)(2). Thus, in the case of joint inventors, only one
inventor needs to be different for the inventive entities to be
different. Even if there are some inventors in common in a U.S. patent,
a U.S. patent application publication, or WIPO published application
and in a later-filed application under examination or patent under
reexamination, the U.S. patent, a U.S. patent application publication,
or WIPO published application qualifies as prior art under 35 U.S.C.
102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is applicable.
2. Prior Art Exception Under 35 U.S.C. 102(b)(2)(A) to 35 U.S.C.
102(a)(2)
Under 35 U.S.C. 102(b)(2)(A), certain disclosures will not be
considered prior art under 35 U.S.C. 102(a)(2) if the disclosure of the
subject matter on which the rejection is based was made by another who
obtained the subject matter directly or indirectly from the inventor or
a joint inventor.
Non-Inventor Disclosure Exception: 35 U.S.C. 102(b)(2)(A) provides
that a disclosure which would otherwise qualify as prior art under 35
U.S.C. 102(a)(2) is not prior art if the disclosure was made by another
who obtained the subject matter directly or indirectly from the
inventor or a joint inventor. This means that if the disclosure of the
subject matter upon which the rejection is based is by another who
obtained the subject matter from the inventor or joint inventor, then
the inventor could provide an affidavit or declaration to establish
that the inventor or joint inventor is the inventor of the subject
matter of the disclosure and that such subject matter was communicated
to the other entity. Thus, an applicant may benefit from the earlier
disclosure by another during the grace period, if the applicant can
establish that the inventor or a joint inventor is the actual inventor
of the subject matter of the disclosure and that the subject matter was
obtained directly or indirectly from the inventor or a joint inventor.
As discussed previously, proposed 37 CFR 1.130(a)(2) provides for
an affidavit or declaration to establish that the named inventor or
joint inventor is the inventor of the disclosed subject matter, and
that the subject matter was communicated by the inventor or a joint
inventor to another who disclosed it. Such an affidavit or declaration
must show that the inventor or a joint inventor is the inventor of the
subject matter of the disclosure and indicate the communication of the
subject matter by the inventor or a joint inventor to another who
disclosed the subject matter. Specifically, the inventor must show that
a named inventor actually invented the subject matter of the
disclosure.\47\ The inventor must also show a communication of the
subject matter of the disclosure sufficient to enable one of ordinary
skill in the art to make the subject matter of the claimed
invention.\48\ Any documentation which provides evidence of the
communication of the subject matter by the inventor or a joint inventor
to the entity that earlier disclosed the subject matter should
accompany the affidavit or declaration. This is similar to the current
process for disqualifying a publication as being derived from the

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 399

inventor discussed in MPEP § 2137.
\47\ In re Facius, 408 F.2d 1396, 1407 (CCPA 1969).
\48\ Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573,
1577 (Fed. Cir. 1997).
In circumstances where the claims of the cited prior art, which
names another inventor and is a U.S. patent, or U.S. patent application
publication, and the claims of the application under examination are
directed to the same or substantially the same invention, the Office
may require an applicant to file a petition for derivation proceeding
pursuant to 37 CFR 41.401 et seq. of this title.
3. Prior Art Exception Under 35 U.S.C. 102(b)(2)(B) to 35 U.S.C. 102(a)(2)
35 U.S.C. 102(b)(2)(B) provides another exception to the prior art
provisions of 35 U.S.C. 102(a)(2). Specifically, 35 U.S.C. 102(b)(2)(B)
indicates that certain disclosures are not prior art if the disclosure
of the subject matter of the claimed invention to be disqualified was
made after a disclosure of the subject matter by the inventor or a
joint inventor or after a disclosure of the subject matter by another
who obtained the subject matter directly or indirectly from the
inventor or joint inventor. In other words, an inventor, joint
inventor, or someone who obtained the subject matter directly or
indirectly from the inventor or joint inventor, disclosed the subject
matter before the disclosure of the subject matter on which the
rejection is based.
As discussed previously with respect to 35 U.S.C. 102(b)(1)(B), the
exception in 35 U.S.C. 102(b)(2)(B) requires that the subject matter in
the prior disclosure being relied upon under 35 U.S.C. 102(a) be the
same "subject matter" as the subject matter publicly disclosed by the
inventor before such prior art disclosure for the exception in 35
U.S.C. 102(b)(2)(B) to apply.\49\ Even if the only differences between
the subject matter in the prior art disclosure that is relied upon
under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the
inventor before such prior art disclosure are mere insubstantial
changes, or only trivial or obvious variations, the exception under 35
U.S.C. 102(b)(2)(B) does not apply.
\49\ 35 U.S.C. 102(b)(2)(B).
Intervening disclosure: Under this exception, potential prior art
under 35 U.S.C. 102(a)(2) is not prior art if the U.S. patent, U.S.
patent application publication, or WIPO published application was
effectively filed after the subject matter was first disclosed by the
inventor, a joint inventor, or another who obtained it directly or
indirectly from the inventor or joint inventor.
As discussed previously, an affidavit or declaration under 37 CFR
1.130(a)(1) could be used to establish that the subject matter
disclosed in the cited patent or published application to be
disqualified had been publicly disclosed by the inventor or a joint
inventor before the date the subject matter in the patent or published
application to be disqualified was effectively filed. Specifically, the
inventor or joint inventor must establish the date and content of their
earlier public disclosure. If the earlier disclosure was a printed
publication, the affidavit or declaration must be accompanied by a copy
of the printed publication. If the earlier disclosure was not a printed
publication, the affidavit or declaration must describe the earlier
disclosure with sufficient detail and particularity to determine that
the earlier disclosure is a public disclosure of the subject matter.
Alternatively, also as discussed previously, an affidavit or
declaration under 37 CFR 1.130(a)(2) could establish that the subject
matter disclosed in the cited patent or published application to be
disqualified had been publicly disclosed by a party who obtained the
subject matter directly or indirectly from the inventor or a joint
inventor before the date the subject matter in the patent or published
application to be disqualified was effectively filed. Specifically, the

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 400

inventor or joint inventor must establish the date and content of their
earlier public disclosure. The affidavit or declaration must also show
that the inventor or a joint inventor is the inventor of the subject
matter disclosed in the patent or published application and indicate
the communication of the subject matter to another who disclosed the
subject matter. As discussed previously, this is similar to the current
process for disqualifying a publication as being derived from the
inventor discussed in MPEP § 2137.
Such an affidavit or declaration under 37 CFR 1.130(a)(2) must also
establish the date and content of the earlier public disclosure which
was made by another who obtained the subject matter directly or
indirectly from the inventor or a joint inventor. If the earlier
disclosure was a printed publication, the affidavit or declaration must
be accompanied by a copy of the printed publication. If the earlier
disclosure was not a printed publication, the affidavit or declaration
must describe the earlier disclosure with sufficient detail and
particularity to determine that the earlier disclosure was a public
disclosure of the subject matter. Any documentation which provides
evidence of the public availability of a non-printed publication prior
art and any documentation which provides evidence of the communication
of the subject matter by the inventor or a joint inventor to the entity
that disclosed the subject matter should accompany the affidavit or
declaration.
In circumstances where the claims of the cited patent or published
application to be disqualified is a U.S. patent, or a U.S. patent
application publication of a pending or patented application that names
another inventor, and the claims of the application under examination
and the cited patent or published application are directed to the same
or substantially the same invention, the Office may require applicant
to file a petition for derivation proceeding pursuant to 37 CFR 41.401
et seq.
4. Prior Art Exception Under 35 U.S.C. 102(b)(2)(C) to 35 U.S.C. 102(a)(2)
Under 35 U.S.C. 102(b)(2)(C), there is an exception to the prior
art defined in 35 U.S.C. 102(a)(2) if the disclosures of the subject
matter on which the rejection is based and the claimed invention, not
later than the effective filing date of the claimed invention, were
owned by the same person or subject to an obligation of assignment to
the same person.
In accordance with 35 U.S.C. 102(a)(2), a U.S. patent, U.S. patent
application publication, or WIPO published application that describes a
claimed invention of an application under examination may be prior art
as of its effective filing date. However, 35 U.S.C. 102(b)(2)(C)
excludes published applications or patents from 35 U.S.C. 102(a)(2) if
the subject matter disclosed in the potential prior art published
application or patent, and the claimed invention of the application
under examination "were owned by the same person or subject to an
obligation of assignment to the same person." In this situation, the
U.S. patent, U.S. patent application publication, or WIPO published
application is not available as prior art under 35 U.S.C. 102(a)(2), so
long as the common ownership or obligation to assign existed not later
than the effective filing date of the claimed invention.
AIA 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in
that both concern common ownership, and both offer an avenue by which
an applicant may avoid certain rejections. However, there are
significant differences between AIA 35 U.S.C. 102(b)(2)(C) and pre-AIA
35 U.S.C. 103(c).
If the provisions of 35 U.S.C. 102(b)(2)(C) are met, a U.S. patent,
U.S. patent application publication, or WIPO published application that
might otherwise qualify as prior art under 35 U.S.C. 102(a)(2) is not
available as prior art under either 35 U.S.C. 102 or 103. In contrast,
pre-AIA 35 U.S.C. 103(c) merely provided that if its conditions were
met, prior art qualifying only under pre-AIA 35 U.S.C. 102(e), (f), or
(g), would not preclude patentability under 35 U.S.C. 103. Under pre-
AIA 35 U.S.C. 103(c), prior art qualifying only under pre-AIA 35 U.S.C.
102(e), (f), or (g) could preclude patentability under 35 U.S.C. 102,

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 401

even if the conditions of pre-AIA 35 U.S.C. 103(c) were met. The
consequence of this distinction is that a published application or an
issued patent that falls under the common ownership provisions of AIA
35 U.S.C. 102(b)(2)(C) may not be applied in either an anticipation or
an obviousness rejection.
It is important to note the circumstances in which the AIA 35
U.S.C. 102(b)(2)(C) exception does not remove U.S. patents, U.S. patent
application publications, or WIPO published applications as a basis for
any rejection. Even if the U.S. patent or U.S. published application is
not prior art under 35 U.S.C. 102 or 103 as a result of AIA 35 U.S.C.
102(b)(2)(C), a double patenting rejection (either statutory under 35
U.S.C. 101 or non-statutory, sometimes called obviousness-type) may
still be made on the basis of the U.S. patent or U.S. patent
application publication. Furthermore, the U.S. patent, U.S. patent
application publication, or WIPO published application that does not
qualify as prior art as a result of AIA 35 U.S.C. 102(b)(2)(C) may be
cited, in appropriate situations, to indicate the state of the art when
making a lack of enablement rejection under 35 U.S.C. 112(a). A
document need not qualify as prior art to be applied in the context of
double patenting \50\ or enablement.\51\ Also, the AIA 35 U.S.C.
102(b)(2)(C) exception does not apply to any disclosure made before the
effective filing date of the claimed invention under AIA 35 U.S.C.
102(a)(1). Thus, if the issue date of a U.S. patent or publication date
of a U.S. patent application publication or WIPO published application
is before the effective filing date of the claimed invention, it may be
prior art under AIA 35 U.S.C. 102(a)(1), regardless of common ownership
or the existence of an obligation to assign.
\50\ MPEP § 804.03 (prior art disqualified under the CREATE
Act may be the basis for a double patenting rejection).
\51\ MPEP § 2124 (publications after the critical date may
be used to show factual evidence that, as of an application's filing
date, undue experimentation would have been required to make or use
the invention, that a parameter absent from the claims was or was
not critical, that a statement in the specification was inaccurate,
that the invention was inoperative or lacked utility, that a claim
was indefinite, or that characteristics of prior art products were
known).
The Office is concurrently proposing in a separate action (RIN
0651-AC77) to revise the rules of practice to include provisions that
pertain to commonly owned or joint research agreement subject matter
(proposed 37 CFR 1.104(c)(4) and (c)(5)). Proposed 37 CFR 1.104(c)(4)
would be applicable to applications that are subject to AIA 35 U.S.C.
102 and 103. Proposed 37 CFR 1.104(c)(5) would be applicable to
applications that are subject to 35 U.S.C. 102 and 103 as in effect on
March 15, 2013 (pre-AIA 35 U.S.C. 102 and 103). Proposed 37 CFR
1.104(c)(4)(i) would pertain to commonly owned subject matter under AIA
35 U.S.C. 102 and 103, and proposed 37 CFR 1.104(c)(5)(i) would pertain
to commonly owned subject matter under pre-AIA 35 U.S.C. 102 and 103.
An applicant's clear and conspicuous statement on the record will
be sufficient to establish that the AIA 35 U.S.C. 102(b)(2)(C)
exception applies. When relying on the provisions of pre-AIA 35 U.S.C.
103(c), the applicant or his attorney or agent of record could provide
the statement required to disqualify the cited prior art. Because the
practice to rely on the AIA 35 U.S.C. 102(b)(2)(C) provisions is
similar to previous provisions under pre-AIA 35 U.S.C. 103(c), the
statement from the applicant or his attorney or agent of record would
still be sufficient to disqualify such disclosures. The statement must
indicate that the claimed invention of the application under
examination and the subject matter disclosed in the published
application or issued patent (prior art) to be excluded under AIA 35
U.S.C. 102(b)(2)(C) were owned by the same person or subject to an
obligation of assignment to the same person not later than the
effective filing date of the claimed invention. The applicant may
present supporting evidence such as copies of assignment documents, but

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 402

is not required to do so. Unless an examiner has independent evidence
which raises doubt as to the veracity of such a statement, the examiner
may not request corroborating evidence. The statement under AIA 35
U.S.C. 102(b)(2)(C) will generally be treated by the examiner
analogously to statements made under pre-AIA 35 U.S.C. 103(c). See MPEP
§ 706.02(l)(2)(II).
II. Joint Research Agreements
35 U.S.C. 102(c) provides that subject matter disclosed, which
might otherwise qualify as prior art, and a claimed invention are
treated as having been owned by the same person or subject to an
obligation of assignment to the same person in applying the provisions
of 35 U.S.C. 102(b)(2)(C) if three conditions are satisfied. First, the
subject matter disclosed must have been developed and the claimed
invention must have been made by, or on behalf of, one or more parties
to a joint research agreement that was in effect on or before the
effective filing date of the claimed invention.\52\ The AIA defines the
term "joint research agreement" as a written contract, grant, or
cooperative agreement entered into by two or more persons or entities
for the performance of experimental, developmental, or research work in
the field of the claimed invention.\53\ Second, the claimed invention
must have been made as a result of activities undertaken within the
scope of the joint research agreement.\54\ Third, the application for
patent for the claimed invention must disclose, or be amended to
disclose, the names of the parties to the joint research agreement.\55\
Proposed 37 CFR 1.104(c)(4)(ii) pertains to joint research agreement
subject matter under AIA 35 U.S.C. 102 and 103, and proposed 37 CFR
1.104(c)(5)(ii) pertains to joint research agreement subject matter
under pre-AIA 35 U.S.C. 102 and 103. If these conditions are met, the
joint research agreement prior art is not available as prior art under
35 U.S.C. 102(a)(2).
\52\ 35 U.S.C. 102(c)(1).
\53\ 35 U.S.C. 100(h).
\54\ 35 U.S.C. 102(c)(2).
\55\ 35 U.S.C. 102(c)(3)
The provisions of AIA 35 U.S.C. 102(c) generally track those of the
Cooperative Research and Technology Enhancement Act of 2004 (CREATE
Act).\56\ The major differences between AIA 35 U.S.C. 102(c) and the
CREATE Act are that the new provision is keyed to the effective filing
date of the claimed invention, while the CREATE Act focused on the date
that the claimed invention was made, and that the CREATE Act provisions
only applied to prior art obviousness rejections.
\56\ Public Law 108-453, 118 Stat. 3596 (2004)), which was an
amendment to pre-AIA 35 U.S.C. 103(c). Congress has made it clear
that the intent of AIA 35 U.S.C. 102(c) is to continue the promotion
of joint research activities that was begun under the CREATE Act,
stating in section 3(b) of the AIA that "The United States Patent
and Trademark Office shall administer section 102(c) of title 35,
United States Code, in a manner consistent with the legislative
history of the CREATE Act that was relevant to its administration by
the United States Patent and Trademark Office." See 125 STAT. at 287.
In order to invoke a joint research agreement to disqualify a
disclosure as prior art, the applicant must provide a statement that
the disclosure of the subject matter on which the rejection is based
and the claimed invention were made by or on behalf of parties to a
joint research agreement under AIA 35 U.S.C. 102(c). The statement must
also assert that the agreement was in effect on or before the effective
filing date of the claimed invention, and that the claimed invention
was made as a result of activities undertaken within the scope of the
joint research agreement. When relying on the provisions of pre-AIA 35
U.S.C. 103(c), the applicant or his attorney or agent of record could

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 403

provide the statement required to disqualify the cited prior art.
Because the practice to rely on the 102(c) provisions is similar to
previous provisions under pre-AIA 35 U.S.C. 103(c), the statement from
the applicant or his attorney or agent of record would still be
sufficient to disqualify such disclosures. If the names of the parties
to the joint research agreement are not already stated in the
application, it is necessary to amend the application to include the
names of the parties to the joint research agreement in accordance with
37 CFR 1.71(g). As is the case with establishing common ownership, the
applicant may, but is not required to, present evidence supporting the
existence of the joint research agreement. Furthermore, the Office will
not request corroborating evidence in the absence of independent
evidence which raises doubt as to the existence of the joint research
agreement.
As discussed previously, the AIA 35 U.S.C. 102(b)(2)(C) exception
does not apply to any disclosure made before the effective filing date
of the claimed invention under AIA 35 U.S.C. 102(a)(1). Thus, if the
issue date of a U.S. patent or publication date of a U.S. patent
application publication or WIPO published application is before the
effective filing date of the claimed invention, it may be prior art
under AIA 35 U.S.C. 102(a)(1) regardless of the fact that the subject
matter disclosed and the claimed invention resulted from a joint
research agreement.
III. Improper Naming of Inventors
Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent
laws still require that a patent name the actual inventor or joint
inventors of the claimed subject matter. The Office presumes that the
named inventor or inventors are the actual inventor or joint
inventors.\57\ Where an application names an incorrect inventorship,
the applicant should correct the situation via a request to correct
inventorship under 37 CFR 1.48. In the rare situation in which it is
clear that the application does not name the correct inventorship and
the applicant has not filed a request to correct inventorship under 37
CFR 1.48, the appropriate course of action is to reject the claims
under 35 U.S.C. 101.\58\
\57\ MPEP § 2137.01.
\58\ As discussed in end note 1, 35 U.S.C. 101 provides that:
"[w]hoever invents or discovers * * *, may obtain a patent therefor,
subject to the conditions and requirements of this title."
IV. 35 U.S.C. 103
AIA 35 U.S.C. 103 continues to set forth the nonobviousness
requirement for patentability.\59\ There are, however, some important
changes from pre-AIA 35 U.S.C. 103.
\59\ 35 U.S.C. 103 provides that: A patent for a claimed
invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in section 102,
if the differences between the claimed invention and the prior art
are such that the claimed invention as a whole would have been
obvious before the effective filing date of the claimed invention to
a person having ordinary skill in the art to which the claimed
invention pertains. Patentability shall not be negated by the manner
in which the invention was made.
The most significant difference between the AIA 35 U.S.C. 103 and
pre-AIA 35 U.S.C. 103(a) is that AIA 35 U.S.C. 103 determines
obviousness as of the effective filing date of the claimed invention,
rather than as of the time that the invention was made. Under pre-AIA
examination practice, the Office uses the effective filing date as a
proxy for the invention date, unless there is evidence of record to
establish an earlier date of invention. Thus, as a practical matter

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 404

during examination, this distinction between the AIA 35 U.S.C. 103 and
pre-AIA 35 U.S.C. 103 will result in a difference in practice only when
the case under examination is subject to pre-AIA 35 U.S.C. 103, and
there is evidence in the case concerning a date of invention prior to
the effective filing date. Such evidence is ordinarily presented by way
of an affidavit or declaration under 37 CFR 1.131.
Next, AIA 35 U.S.C. 103 differs from that of pre-AIA 35 U.S.C. 103
in that the AIA 35 U.S.C. 103 requires consideration of "the
differences between the claimed invention and the prior art," while
pre-AIA 35 U.S.C. 103 refers to "the differences between the subject
matter sought to be patented and the prior art." This difference in
terminology does not indicate the need for any difference of approach
to the question of obviousness.\60\
\60\ As pointed out by the Federal Circuit, "[t]he term
`claims' has been used in patent legislation since the Patent Act of
1836 to define the invention that an applicant believes is
patentable." Hoechst-Roussel Pharmaceuticals, Inc. v. Lehman, 109
F.3d 756, 758 (Fed. Cir. 1997) (citing Act of July 4, 1836, ch. 357,
§ 6, 5 Stat. 117). Furthermore, in Graham v. John Deere, 383
U.S. 1 (1966), the second of the Supreme Court's factual inquiries
(the "Graham factors") is that the "differences between the prior
art and the claims at issue are to be ascertained." Graham, 383
U.S. at 17. Thus, in interpreting 35 U.S.C. 103 as enacted in the
1952 Patent Act - language that remained unchanged until enactment of
the AIA - the Court equated "the subject matter sought to be
patented" with the claims.
Further, the AIA 35 U.S.C. 103 eliminates pre-AIA 35 U.S.C. 103(b),
and the AIA does not contain any similar provision. Pre-AIA 35 U.S.C.
103(b) is narrowly drawn, applying only to nonobviousness of
biotechnological inventions, and even then, only when specifically
invoked by the patent applicant. Pre-AIA 35 U.S.C. 103(b) provides that
under certain conditions, "a biotechnological process using or
resulting in a composition of matter that is novel under section 102
and nonobvious under subsection [103(a)] of this section shall be
considered nonobvious." In view of the case law since 1995,\61\ the
need to invoke pre-AIA 35 U.S.C. 103(b) has been rare.
\61\ As stated in MPEP § 706.02(n), in view of the Federal
Circuit's decisions in In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995)
and In re Brouwer, 77 F.3d 422 (Fed. Cir. 1996), the need to invoke
pre-AIA 103(b) rarely arose. Those cases continue to retain their
vitality under the AIA.
Finally, the AIA 35 U.S.C. 103 eliminates pre-AIA 35 U.S.C. 103(c),
but corresponding provisions have been introduced in AIA 35 U.S.C.
102(b)(2)(C) and 102(c). Pre-AIA 35 U.S.C. 103(c) applied if subject
matter qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f),
or (g), and only in the context of obviousness under pre-AIA 35 U.S.C.
103(a). If subject matter developed by another person was commonly
owned with the claimed invention, or if the subject matter was subject
to an obligation of assignment to the same person, at the time the
claimed invention was made, then pre-AIA 35 U.S.C. 103(a) did not
preclude patentability. Furthermore, under the pre-AIA 35 U.S.C.
103(c), if a joint research agreement was in place on or before the
date that the claimed invention was made, the claimed invention was
made as a result of activities undertaken within the scope of the joint
research agreement, and the application for patent was amended to
disclose the names of the parties to the joint research agreement,
common ownership or an obligation to assign was deemed to exist. As
discussed previously, AIA 35 U.S.C. 102(b)(2)(C) and 102(c) expand on
this concept. Under the AIA first-inventor-to-file approach, the common
ownership, the obligation to assign, or the joint research agreement
must exist on or before the effective filing date, rather than on or
before the date the invention was made. If the provisions of AIA 35

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 405

U.S.C. 102(b)(2)(C) are met, a disclosure is not prior art at all,
whereas under pre-AIA 35 U.S.C. 103(c), certain prior art merely was
defined as not precluding patentability. Finally, disclosures
disqualified as prior art under AIA 35 U.S.C. 102(b)(2)(C) and 102(c)
may not be applied in either an anticipation or an obviousness
rejection. However, such disclosures could be the basis for statutory
double patenting or non-statutory double patenting rejections.
Generally speaking, and with the exceptions noted herein, pre-AIA
notions of obviousness will continue to apply under the AIA. It should
be noted that AIA 35 U.S.C. 102(a) defines what is prior art both for
purposes of novelty under AIA 35 U.S.C. 102 as well as for purposes of
obviousness under AIA 35 U.S.C. 103.\62\ Thus, if a document qualifies
as prior art under AIA 35 U.S.C. 102(a)(1) or (a)(2), and is not
subject to an exception under AIA 35 U.S.C. 102(b), it may be applied
for what it describes or teaches to those skilled in the art in a
rejection under 35 U.S.C. 103.\63\ Finally, Office personnel will
continue to follow guidance for formulating an appropriate rationale to
support any conclusion of obviousness. See MPEP § 2141 et seq. and
the guidance documents available at
http://www.uspto.gov/patents/law/exam/ksr_training_materials.jsp.
\62\ Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965)
(a previously filed patent application to another pending in the
Office, but not patented or published, at the time an application is
filed constitutes part of the "prior art" within the meaning of 35
U.S.C. 103).
\63\ This is in accordance with pre-AIA case law indicating that
in making determinations under 35 U.S.C. 103, "it must be known
whether a patent or publication is in prior art under 35 U.S.C.
102." Panduit Corp. v Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed.
Cir 1987). However, while a disclosure must enable those skilled in
the art to make the invention in order to anticipate under 35 U.S.C.
102, a non-enabling disclosure is prior art for all it teaches for
purposes of determining obviousness under 35 U.S.C. 103. Symbol
Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991);
Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.
Cir. 1989).
V. Applicability Date Provisions, Determining Whether an Application Is
Subject to Provisions of First Inventor To File Under AIA
Because the changes to 35 U.S.C. 102 and 103 in the AIA apply only
to specific applications filed on or after March 16, 2013, determining
the effective filing date of a claimed invention for purposes of
applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102
and 103 provisions is critical.
A. Applications Filed Before March 16, 2013
The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any
application filed before March 16, 2013. Thus, any application filed
before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103.
Note that the filing of a request for continued examination is not the
filing of a new application.
B. Applications Filed on or After March 16, 2013
AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. AIA 35
U.S.C. 102 and 103 apply to any patent application that contains or
contained at any time a claimed invention that has an effective filing
date that is on or after March 16, 2013. If a patent application
contains or contained at any time a claimed invention having an effective
filing date on or after March 16, 2013, 35 U.S.C. 102 and 103, as amended
by the AIA, apply to the application. If even a single claim in the
application ever has an effective filing date on or after March 16, 2013,
AIA 35 U.S.C. 102 and 103 apply in determining the patentability of every

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 406

claim in the application. This is the situation even if the remaining
claimed inventions all have an effective filing date before March 16, 2013,
and even if the claimed invention having an effective filing date on or
after March 16, 2013, is canceled.
In addition, AIA 35 U.S.C. 102 and 103 apply to any patent
application that contains or contained at any time a specific reference
under 35 U.S.C. 120, 121, or 365(c) to any patent or application that
contains or contained at any time a claimed invention that has an
effective filing date that is on or after March 16, 2013. Thus, AIA 35
U.S.C. 102 and 103 apply to any patent application that was ever
designated as a continuation, divisional, or continuation-in-part of an
application that contains or contained at any time a claimed invention
that has an effective filing date that is on or after March 16, 2013.
This is the situation even if the application is amended to delete its
reference as a continuation, divisional, or continuation-in-part to the
prior-filed application, and even if the claimed invention having an
effective filing date on or after March 16, 2013, in the prior-filed
application, is canceled. An application filed on or after March 16,
2013, is governed by pre-AIA 35 U.S.C. 102 and 103 only if: (1) The
application does not contain and never contained any claimed invention
having an effective filing date on or after March 16, 2013; and (2) the
application does not contain and never contained a specific reference
under 35 U.S.C. 120, 121, or 365(c)) to an application that contains or
contained at any time a claim that has an effective filing date that is
on or after March 16, 2013.
Thus, once a claim that has an effective filing date on or after
March 16, 2013, is introduced in an application, or is introduced to an
application in its continuity chain, AIA 35 U.S.C. 102 and 103 apply to
that application and any subsequent continuation, divisional, or
continuation-in-part of that application. Specifically, a patent
application may be amended to add a claimed invention having an
effective filing date on or after March 16, 2013, or a specific
reference under 35 U.S.C. 120, 121 or 365(c) to an application
containing a claimed invention having an effective filing date on or
after March 16, 2013, that results in the application no longer being
subject to pre-AIA 35 U.S.C. 102 and 103 but being subject to AIA 35
U.S.C. 102 and 103. However, no amendment to a claim, or to a specific
reference under 35 U.S.C. 120, 121 or 365(c), or both, will result in
the application changing from being subject to AIA 35 U.S.C. 102 and
103 to being subject to pre-AIA 35 U.S.C. 102 and 103.
Also, AIA 35 U.S.C. 102 and 103 apply to any patent resulting from
an application to which AIA 35 U.S.C. 102 and 103 were applied.
Similarly, pre-AIA 35 U.S.C. 102 and 103 apply to any patent resulting
from an application to which pre-AIA 35 U.S.C. 102 and 103 were applied.
C. Applications Subject to the AIA But Also Containing a Claim Having
an Effective Filing Date Before March 16, 2013
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application,
pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application
if it: (1) Contains or contained at any time a claimed invention having
an effective filing date that occurs before March 16, 2013; or (2) is
ever designated as a continuation, divisional, or continuation-in-part
of an application that contains or contained at any time a claimed
invention that has an effective filing date that occurs before March
16, 2013. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting
from an application to which pre-AIA 35 U.S.C. 102(g) applied.
Thus, if an application contains, or contained at any time, any
claimed invention having an effective filing date that occurs before
March 16, 2013, and also contains, or contained at any time, any
claimed invention having an effective filing date that is on or after
March 16, 2013, AIA 35 U.S.C. 102 and 103 apply to the application, but
each claim must also satisfy pre-AIA 35 U.S.C. 102(g) for the applicant
to be entitled to a patent.
Thus, when subject matter is claimed in an application having
priority to or the benefit of a prior-filed application (e.g., under 35

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 407

U.S.C. 120, 121 or 365(c)), care must be taken to accurately determine
whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the application.
D. Applicant Statement Regarding Applicability of AIA Provisions to
Claims in Applications Filed on or After March 16, 2013
The Office is concurrently proposing the following amendments to 37
CFR 1.55 and 1.78 a separate action (RIN 0651-AC77). First, the Office
is proposing to require that if a nonprovisional application filed on
or after March 16, 2013, claims the benefit of or priority to the
filing date of a foreign, U.S. provisional, U.S. nonprovisional, or
international application that was filed prior to March 16, 2013, and
also contains or contained at any time a claimed invention having an
effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect. Second, the Office is proposing to
require that if a nonprovisional application filed on or after March
16, 2013, does not contain a claim to a claimed invention having an
effective filing date on or after March 16, 2013, but discloses subject
matter not also disclosed in the foreign, provisional, or
nonprovisional application, the applicant must provide a statement to
that effect. This information will assist the Office in determining
whether the application is subject to AIA 35 U.S.C. 102 and 103 or pre-
AIA 35 U.S.C. 102 and 103.
July 17, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office

Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act

DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2012-0015]
RIN 0651-AC77
Changes To Implement the
First Inventor To File Provisions of the
Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The Leahy-Smith America Invents Act (AIA) amends the patent
laws pertaining to the conditions of patentability to convert the
United States patent system from a "first to invent" system to a
"first inventor to file" system; treats United States patents and
United States patent application publications as prior art as of their
earliest effective United States, foreign, or international filing
date; eliminates the requirement that a prior public use or sale be
"in this country" to be a prior art activity; and treats commonly
owned or joint research agreement patents and patent application
publications as being by the same inventive entity for purposes of
novelty, as well as nonobviousness. The AIA also repeals the provisions
pertaining to statutory invention registrations. The current rules of
practice in patent cases have a number of provisions based on the
conditions of patentability of a "first to invent" patent system. The
United States Patent and Trademark Office (Office) is proposing to
amend the rules of practice in patent cases to implement the changes to
the conditions of patentability in the AIA, and to eliminate the
provisions pertaining to statutory invention registrations.
DATES: Comment Deadline Date: Written comments must be received on or
before October 5, 2012.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: fitf_rules@uspto.gov. Comments may also be
submitted by postal mail addressed to: Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450,
marked to the attention of Susy Tsang-Foster, Legal Advisor, Office of
Patent Legal Administration.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE® portable
document format or MICROSOFT WORD® format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE® portable
document format.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, currently located in Madison East,
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Legal Advisor

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 409

((571) 272-7711), Pinchus M. Laufer, Senior Legal Advisor ((571) 272-
7726), or Eugenia A. Jones, Senior Legal Advisor ((571) 272-7727),
Office of Patent Legal Administration, Office of the Deputy Commissioner
for Patent Examination Policy.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: Section 3 of the AIA, inter alia, amends
the patent laws to: (1) Convert the United States patent system from a
"first to invent" system to a "first inventor to file" system; (2) treat
U.S. patents and U.S. patent application publications as prior art as of
their earliest effective filing date, regardless of whether the
earliest effective filing date is based upon an application filed in
the U.S. or in another country; (3) eliminate the requirement that a
prior public use or sale be "in this country" to be a prior art
activity; and (4) treat commonly owned or joint research agreement
patents and patent application publications as being by the same
inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C.
103. These changes in section 3 of the AIA are effective on March 16,
2013, but apply only to certain applications filed on or after March
16, 2013. The Office sets out the conditions of patentability in 35
U.S.C. 102 and 103 as interpreted by the case law in the Manual of
Patent Examining Procedure (MPEP). See MPEP §§ 2121 through
2143 (8th ed. 2001) (Rev. 8, July 2010). The Office plans to issue
guidelines and train the Patent Examining Corps on how the changes to
35 U.S.C. 102 and 103 in section 3 of the AIA impact the provisions of
the MPEP pertaining to 35 U.S.C. 102 and 103.
The rules of practice for patent cases in title 37 of the Code of
Federal Regulations (CFR) are currently drafted for examination under
the "first to invent" system in effect prior to March 16, 2013. Thus,
this notice proposes changes to the rules of practice in title 37, CFR,
for consistency with, and to address the examination issues raised by,
the changes in section 3 of the AIA.
Summary of Major Provisions: The Office is specifically proposing
to provide the following changes:
The Office is proposing to add the definitions provided in the AIA
to the rules of practice for the terms commonly used in the rules of
practice.
The Office is providing for the submission of affidavits or
declarations showing that: (1) A disclosure upon which a claim
rejection is based was by the inventor or joint inventor or by a party
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor; or (2) there was a prior public
disclosure by the inventor or a joint inventor or another who obtained
the subject matter disclosed directly or indirectly from the inventor
or a joint inventor.
The Office is proposing to provide for the situation in which a
U.S. patent or U.S. patent application publication has a prior art
effect as of the filing date of a foreign priority application by
requiring that the certified copy of the foreign application be filed
within the later of four months from the actual filing date of the
application or sixteen months from the filing date of the prior foreign
application.
The Office is eliminating the provisions directed to statutory
invention registrations.
Finally, the Office is proposing additional requirements for
nonprovisional applications filed on or after March 16, 2013, that
claim the benefit of the filing date of a foreign, provisional, or
nonprovisional application filed prior to March 16, 2013. If such a
nonprovisional application contains at any time a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
the applicant must provide a statement to that effect within the later
of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
in an international application, sixteen months from the filing date of
the prior-filed application, or the date that a first claim to a
claimed invention that has an effective filing date on or after March

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 410

16, 2013, is presented in the application. In addition, if such a
nonprovisional application does not contain a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
but discloses subject matter not also disclosed in the foreign,
provisional, or nonprovisional application, the applicant must provide
a statement that the application includes subject matter not disclosed
in the foreign, provisional, or nonprovisional application within the
later of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
in an international application, or sixteen months from the filing date
of the prior-filed application. This will permit the Office to readily
determine whether the nonprovisional application is subject to the
changes to 35 U.S.C. 102 and 103 in the AIA.
Costs and Benefits: This rulemaking is not economically significant
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
Specific Changes to title 35, United States Code: The AIA was
enacted into law on September 16, 2011. See Public Law 112-29, 125
Stat. 284 (2011). Section 3 of the AIA specifically amends 35 U.S.C.
102 to provide in 35 U.S.C. 102(a) that a person shall be entitled to a
patent unless: (1) The claimed invention was patented, described in a
printed publication, or in public use, on sale, or otherwise available
to the public before the effective filing date of the claimed
invention; or (2) the claimed invention was described in a patent
issued under 35 U.S.C. 151, or in an application for patent published
or deemed published under 35 U.S.C. 122(b), in which the patent or
application, as the case may be, names another inventor and was
effectively filed before the effective filing date of the claimed
invention. See 125 Stat. at 285-86. The publication of an international
application designating the United States by the World Intellectual
Property Organization (WIPO) is deemed a publication under 35 U.S.C.
122(b) (except as provided in 35 U.S.C. 154(d)). See 35 U.S.C. 374.
35 U.S.C. 102(b) as amended by section 3 of the AIA provides for
exceptions to the provisions of 35 U.S.C. 102(a). The exceptions in 35
U.S.C. 102(b)(1) provide that a disclosure made one year or less before
the effective filing date of a claimed invention shall not be prior art
to the claimed invention under 35 U.S.C. 102(a)(1) if: (1) The
disclosure was made by the inventor or joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor; or (2) the subject matter disclosed had,
before such disclosure, been publicly disclosed by the inventor or a
joint inventor or another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor. See 125
Stat. at 286. The exceptions in 35 U.S.C. 102(b)(2) provide that a
disclosure shall not be prior art to a claimed invention under 35
U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained
directly or indirectly from the inventor or a joint inventor; (2) the
subject matter disclosed had, before such subject matter was
effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by
the inventor or a joint inventor or another who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint
inventor; or (3) the subject matter disclosed and the claimed
invention, not later than the effective filing date of the claimed
invention, were owned by the same person or subject to an obligation of
assignment to the same person. See id.
35 U.S.C. 102(c) as amended by section 3 of the AIA provides for
common ownership under joint research agreements. 35 U.S.C. 102(c)
specifically provides that subject matter disclosed and a claimed
invention shall be deemed to have been owned by the same person or
subject to an obligation of assignment to the same person in applying
the provisions of 35 U.S.C. 102(b)(2)(C) if: (1) The subject matter
disclosed was developed and the claimed invention was made by, or on
behalf of, one or more parties to a joint research agreement that was in
effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken
within the scope of the joint research agreement; and (3) the application
for patent for the claimed invention discloses or is amended to disclose

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 411

the names of the parties to the joint research agreement. See id. The AIA
also provides that the enactment of 35 U.S.C. 102(c) is done with the same
intent to promote joint research activities that was expressed, including
in the legislative history, through the enactment of the Cooperative
Research and Technology Enhancement Act of 2004 (the "CREATE Act"; Pub. L.
108-453, 118 Stat. 3596 (2004)), and that the Office shall administer
35 U.S.C. 102(c) in a manner consistent with the legislative history of
the CREATE Act that was relevant to its administration. See 125 Stat.
at 287.
35 U.S.C. 102(d) as amended by section 3 of the AIA provides a
definition for "effectively filed" for purposes of determining
whether a patent or application for patent is prior art to a claimed
invention. 35 U.S.C. 102(d) provides that for purposes of determining
whether a patent or application for patent is prior art to a claimed
invention under 35 U.S.C. 102(a)(2), such patent or application shall
be considered to have been effectively filed, with respect to any
subject matter described in the patent or application on the earliest
of: (1) The actual filing date of the patent or the application for
patent; or (2) if the patent or application for patent is entitled to
claim a right of priority or the benefit of an earlier filing date
under 35 U.S.C. 119, 120, 121, or 365 based upon one or more prior
filed applications for patent, the filing date of the earliest such
application that describes the subject matter. See 125 Stat. at 286-87.
The AIA provides a number of definitions for terms used in title 35
of the United States Code. See 125 Stat. at 285. The term "inventor"
means the individual or, if a joint invention, the individuals
collectively who invented or discovered the subject matter of the
invention, and the terms "joint inventor" and "coinventor" mean any
one of the individuals who invented or discovered the subject matter of
a joint invention. 35 U.S.C. 100(f) and (g). The term "joint research
agreement" means a written contract, grant, or cooperative agreement
entered into by two or more persons or entities for the performance of
experimental, developmental, or research work in the field of the
claimed invention. 35 U.S.C. 100(h). The term "effective filing date"
for a claimed invention in a patent or application for patent (other
than a reissue application or a reissued patent) means the earliest of:
(1) The actual filing date of the patent or the application for the
patent containing a claim to the invention; or (2) the filing date of
the earliest application for which the patent or application is
entitled, as to such invention, to a right of priority or the benefit
of an earlier filing date under 35 U.S.C. 119, 120, 121, or 365. 35
U.S.C. 100(i)(1). The "effective filing date" for a claimed invention
in a reissued patent or an application for reissue shall be determined
by deeming the claim to the invention to have been contained in the
patent for which reissue was sought. 35 U.S.C. 100(i)(2). The term
"claimed invention" means the subject matter defined by a claim in a
patent or an application for a patent. 35 U.S.C. 100(j).
The AIA amends 35 U.S.C. 103 to provide that a patent for a claimed
invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in 35 U.S.C. 102,
if the differences between the claimed invention and the prior art are
such that the claimed invention as a whole would have been obvious
before the effective filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed invention
pertains. See 125 Stat. at 287. 35 U.S.C. 103 also provides that
patentability shall not be negated by the manner in which the invention
was made. See id.
The AIA eliminates the provisions in 35 U.S.C. 135 for patent
interference proceedings and replaces them with patent derivation
proceedings. See 125 Stat. at 289-90. The Office is implementing the
patent derivation proceedings provided for in the AIA in a separate
rulemaking (RIN 0651-AC74). The AIA also replaces the interference
provisions of 35 U.S.C. 291 with derivation provisions. See 125 Stat.
at 288-89.
The AIA repeals the provisions of 35 U.S.C. 104 (special provisions
for inventions made abroad) and 157 (statutory invention

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 412

registrations). See 125 Stat. at 287. The AIA also makes conforming
changes to 35 U.S.C. 111, 119, 120, 134, 145, 146, 154, 172, 202(c),
282, 287, 305, 363, 374, and 375(a). See 125 Stat. at 287-88, and 90-
91.
The AIA provides that the changes (other than the repeal of 35
U.S.C. 157) in section 3 which are being implemented in this rulemaking
take effect on March 16, 2013, and apply to any application for patent,
and to any patent issuing thereon, that contains, or contained at any
time: (1) A claim to a claimed invention that has an effective filing
date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013;
or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any
patent or application that contains, or contained at any time, such a
claim. See 125 Stat. at 293.
The AIA also provides that the provisions of 35 U.S.C. 102(g), 135,
and 291 in effect on March 15, 2013, shall apply to each claim of an
application for patent, and any patent issued thereon, for which the
amendments made by this section also apply, if such application or
patent contains, or contained at any time: (1) A claim to an invention
having an effective filing date as defined in 35 U.S.C. 100(i) that
occurs before March 16, 2013; or (2) a specific reference under 35
U.S.C. 120, 121, or 365(c) to any patent or application that contains,
or contained at any time, such a claim. See id.
Discussion of Specific Rules: The following is a discussion of the
amendments to Title 37 of the Code of Federal Regulations, part 1, that
are being proposed in this notice of proposed rulemaking.
Section 1.9: Section 1.9 is proposed to be amended to add the
definition of the terms used throughout the rules.
Section 1.9(d)(1) as proposed provides that the term "inventor"
or "inventorship" as used in this chapter means the individual or, if
a joint invention, the individuals collectively who invented or
discovered the subject matter of the invention. See 35 U.S.C. 100(f).
While the term "inventorship" is not used in 35 U.S.C. 100(f), the
term "inventorship" is currently used throughout the rules of
practice to mean the individual or, if a joint invention, the
individuals collectively who invented or discovered the subject matter
of the invention. Section 1.9(d)(2) provides that the term "joint
inventor" or "coinventor" as used in this chapter means any one of
the individuals who invented or discovered the subject matter of a
joint invention. See 35 U.S.C. 100(g).
Section 1.9(e) as proposed provides that the term "joint research
agreement" as used in this chapter means a written contract, grant, or
cooperative agreement entered into by two or more persons or entities
for the performance of experimental, developmental, or research work in
the field of the claimed invention. See 35 U.S.C. 100(h).
Section 1.9(f) as proposed provides that the term "claimed
invention" as used in this chapter means the subject matter defined by
a claim in a patent or an application for a patent. See 35 U.S.C. 100(j).
Section 1.53: Section 1.53(j) is proposed to be amended to delete
the phrase "except as provided in 35 U.S.C. 102(e)" to be consistent
with the changes to 35 U.S.C. 102 in the AIA.
Section 1.55: Section 1.55(a)(1) is proposed to be amended to
include the requirement in 35 U.S.C. 119(a) that the nonprovisional
application must be filed not later than twelve months after the date
on which the foreign application was filed, and that this twelve-month
period is subject to 35 U.S.C. 21(b) and § 1.7(a). 35 U.S.C. 21(b)
and § 1.7(a) provide that when the day, or the last day, for taking
any action (e.g., filing a nonprovisional application within twelve
months of the date on which the foreign priority application was filed)
or paying any fee in the Office falls on Saturday, Sunday, or a Federal
holiday within the District of Columbia, the action may be taken, or
fee paid, on the next succeeding secular or business day.
Section 1.55(a)(2) is proposed to be amended to include provisions

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 413

in current § 1.55(a)(1)(i) and to require that the claim for
priority and a certified copy of the foreign application be filed in an
application under 35 U.S.C. 111(a) (other than a design application)
within the later of four months from the actual filing date of the
application or sixteen months from the filing date of the prior foreign
application. Section 1.55(a)(2) as proposed also requires the claim for
priority to be presented in an application data sheet. See Changes To
Implement the Inventor's Oath or Declaration Provisions of the Leahy-
Smith America Invents Act, 77 FR 982, 989-90 (Jan. 6, 2012).
Section 1.55(a)(3) is proposed to be amended to include provisions
in current § 1.55(a)(1)(ii) and to require that the claim for
priority be made and a certified copy of the foreign application filed
within the time limit set forth in the Patent Cooperation Treaty (PCT)
and the Regulations under the PCT in an application that entered the
national stage from an international application after compliance with
35 U.S.C. 371. Since patent application publications will have a prior
art effect as of the earliest priority date (for subject matter
disclosed in the priority application) with respect to applications
subject to 35 U.S.C. 102, as amended by the AIA, the Office needs to
ensure that it has a copy of the priority application by the time of
publication. The proposed time period of four months from the actual
filing date of the application or sixteen months from the filing date
of the prior foreign application is consistent with the international
norm for when the certified copy of the foreign application needs to be
filed in an application. See PCT Rule 17.1(a).
Section 1.55(a)(4) is proposed to be amended to require that if a
nonprovisional application filed on or after March 16, 2013, claims the
benefit of the filing date of a foreign application filed prior to
March 16, 2013, and also contains, or contained at any time, a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, the applicant must provide a statement to that effect within
the later of four months from the actual filing date of the
application, four months from the date of entry into the national stage
as set forth in § 1.491 in an international application, sixteen
months from the filing date of the prior foreign application, or the
date that a first claim to a claimed invention that has an effective
filing date on or after March 16, 2013, is presented in the
application. Section 1.55(a)(4) is also proposed to be amended to
require that if a nonprovisional application filed on or after March
16, 2013, claims the benefit of the filing date of a foreign
application filed prior to March 16, 2013, does not contain a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, but discloses subject matter not also disclosed in the
foreign application, the applicant must provide a statement to that
effect within the later of four months from the actual filing date of
the later-filed application, four months from the date of entry into
the national stage as set forth in § 1.491 in an international
application, or sixteen months from the filing date of the prior
foreign application.
Proposed § 1.55(a)(4) would not require that the applicant
identify how many or which claims in the nonprovisional application
have an effective filing date on or after March 16, 2013, or that the
applicant identify the subject matter in the nonprovisional application
not also disclosed in the foreign application. Proposed § 1.55(a)(4)
would require only that the applicant state that there is a
claim in the nonprovisional application that has an effective filing
date on or after March 16, 2013 (e.g., "upon reasonable belief, this
application contains at least one claim that has an effective filing
date on or after March 16, 2013"), or the applicant state that there
is subject matter in the nonprovisional application not also disclosed
in the foreign application (e.g., "upon reasonable belief, this
application contains subject matter not also disclosed in the foreign
application).
If an applicant fails to timely provide such a statement and then
later indicates that the nonprovisional application contains a claim
having an effective filing date on or after March 16, 2013, or subject

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 414

matter not also disclosed in the foreign application, the Office may
issue a requirement for information under § 1.105 requiring the
applicant to identify where (by page and line or paragraph number)
there is written description support under AIA 35 U.S.C. 112(a) in the
foreign application for the remaining claims in the nonprovisional
application. Likewise, if the applicant later seeks to retract a
previous statement that the nonprovisional application contains a claim
having an effective filing date on or after March 16, 2013, or subject
matter not also disclosed in the foreign application, the Office may
issue a requirement for information under § 1.105 requiring the
applicant to identify where (by page and line or paragraph number)
there is written description support under AIA 35 U.S.C. 112(a) in the
foreign application for each claim in the nonprovisional application.
This information is needed to assist the Office in determining
whether the application is subject to 35 U.S.C. 102 and 103 as amended
by the AIA or 35 U.S.C. 102 and 103 in effect on March 15, 2013. If the
Office must determine on its own the effective filing date of every
claim ever presented in an application filed on or after March 16,
2013, that claims priority to or the benefit of a foreign application
filed prior to March 16, 2013, examination costs will significantly
increase. This proposed provision is tailored to the transition to 35
U.S.C. 102 and 103 under the AIA. Thus, for a nonprovisional
application filed on or after March 16, 2013, that claims the benefit
of the filing date of a foreign application, the applicant would not be
required to provide any statement if: (1) The nonprovisional
application discloses only subject matter also disclosed in a foreign
application filed prior to March 16, 2013; or (2) the nonprovisional
application claims only the benefit of the filing date of a foreign
application filed on or after March 16, 2013.
Section 1.55(c) as proposed contains the provisions regarding
waiver of claims for priority and acceptance of unintentionally delayed
claims. Section 1.55(c) is proposed to be amended to reference claims
for priority under 35 U.S.C. 119(a) through (d) or (f), or 365(a) or
365(b). Section 1.55(c) is proposed to be amended to require a petition
to accept a delayed claim to be accompanied by a certified copy of the
foreign application, unless previously submitted. In view of the time
period for submitting a certified copy in proposed § 1.55(a), a petition
to accept a delayed claim after this time period needs to be accompanied
by a certified copy (unless previously submitted).
Section 1.55(d) as proposed contains provisions for the priority
document exchange program. See Changes to Implement Priority Document
Exchange Between Intellectual Property Offices, 72 FR 1664 (Jan. 16,
2007). Sections 1.55(d)(1)(i) and (d)(1)(ii) contain the provisions of
current §§ 1.55(d)(1)(i) and (d)(1)(ii), except to also require
the claim for priority to be presented in an application data sheet and
that the copy of the foreign application is received by the Office
within the period set forth in § 1.55(a) or by such later time as
may be set by the Office. Section 1.55(d)(1)(iii) is proposed to be
amended to remove the sentence that the request should be made within
the later of four months from the filing date of the application or
sixteen months from the filing date of the foreign application. This
sentence is no longer needed since proposed § 1.55(a) requires the
certified copy to be filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application.
Section 1.55(e) as proposed contains the provisions of current
§ 1.55(a)(2)-(4). In view of the time period in proposed § 1.55(a),
the provisions in current § 1.55(a)(2) and (a)(3) are less
relevant, but these provisions are still needed to cover situations
where the Office is examining an application within four months from
the filing date of the application such as an application examined
under the Office's Track I prioritized examination program. See Changes
to Implement the Prioritized Examination Track (Track I) of the
Enhanced Examination Timing Control Procedures Under the Leahy-Smith
America Invents Act, 76 FR 59050 (Sept. 23, 2011), and Changes to
Implement the Prioritized Examination for Requests for Continued

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 415

Examination, 76 FR 78566 (Dec. 19, 2011). Furthermore, even if a
petition to accept a delayed claim for priority is filed under § 1.55(c),
the claim for priority and the certified copy of the foreign
application must still be filed within the pendency of the application
and before the patent is granted. Thus, § 1.55(e)(1) as proposed
contains the provisions of current § 1.55(a)(2). In addition,
§ 1.55(e)(2) as proposed continues to permit the Office to require the
claim for priority and the certified copy to be submitted earlier than
the time period provided in § 1.55(a).
Furthermore, § 1.55(e)(3) as proposed continues to permit the
Office to require an English language translation of a non-English
language foreign application. Finally, § 1.55(e)(2)(i) and
(e)(3)(i) as proposed also reference a derivation proceeding (in
addition to an interference) as a situation in which the Office may
require the claim for priority and the certified copy, as well as an
English language translation, of the foreign application to be
submitted earlier.
Section 1.55(f) is proposed to be added to provide that the time
periods set forth in § 1.55 are not extendable. The time periods
set forth in § 1.55 are currently not extendable. This provision
simply avoids the need to separate that the time period is not
extendable with respect to each time period set in in § 1.55.
Section 1.71: Section 1.71(g)(1) is proposed to be amended to
change 35 U.S.C. 103(c)(2)(C) to 35 U.S.C. 102(c)(3) to be consistent
with the changes to 35 U.S.C. 102 and 103 in the AIA, which are
described previously in the summary of major changes.
Section 1.77: Section 1.77(b) is proposed to be amended to provide
for any statement regarding prior disclosures by the inventor or a
joint inventor. Section 1.77(a) sets out a preferred arrangement for a
patent application, and § 1.77(b) sets out the preferred
arrangement of the specification of a patent application. If the
information provided by the applicant in this section of the
specification is sufficient to comply with what is required in a § 1.130
affidavit or declaration regarding a prior disclosure (discussed
below), then applicant would not need to provide anything further. If,
however, the information provided by the applicant in this section of
the specification is not sufficient to comply with what is required in
such a § 1.130 affidavit or declaration, then the applicant would
need to submit the required information in an affidavit or declaration
under § 1.130. An applicant is not required to use the format
specified in § 1.77 or identify any prior disclosures by the
inventor or a joint inventor (unless necessary to overcome a
rejection), but identifying any prior disclosures by the inventor or a
joint inventor may save applicants (and the Office) the costs related
to an Office action and reply and expedite examination of the
application.
Section 1.78: Section 1.78 is proposed to be reorganized as
follows: (1) § 1.78(a) as proposed contains provisions relating to
claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application; (2) § 1.78(b) as proposed contains
provisions relating to delayed claims under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application; (3) § 1.78(c) as
proposed contains provisions relating to claims under 35 U.S.C. 120,
121, or 365(c) for the benefit of a prior-filed nonprovisional or
international application; (4) § 1.78(d) as proposed contains
provisions relating to delayed claims under 35 U.S.C. 120, 121, or
365(c) for the benefit of a prior-filed nonprovisional or international
application; (5) § 1.78(e) as proposed contains provisions relating
to applications containing conflicting claims; (6) § 1.78(f) as
proposed contains provisions relating to applications or patents under
reexamination naming different inventors and containing patentably
indistinct claims; and (7) § 1.78(g) as proposed provides that the
time periods set forth in § 1.78 are not extendable.

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 416

Section 1.78(a) as proposed addresses claims under 35 U.S.C. 119(e)
for the benefit of a prior-filed provisional application. Under 35
U.S.C. 119(e)(1), a provisional application must disclose the invention
claimed in at least one claim of the later-filed application in the
manner provided by 35 U.S.C. 112(a) (except for the requirement to
disclose the best mode) for the later-filed application to receive the
benefit of the filing date of the provisional application. See New
Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed.
Cir. 2002) (for a nonprovisional application to actually receive the
benefit of the filing date of the provisional application, "the
specification of the provisional [application] must `contain a written
description of the invention and the manner and process of making and
using it, in such full, clear, concise, and exact terms,' 35 U.S.C. 112
¶ 1, to enable an ordinarily skilled artisan to practice the invention
claimed in the nonprovisional application"). Section 1.78(a), however,
as proposed does not also state (as does current § 1.78(a)(4)) that
the provisional application must disclose the invention claimed in at
least one claim of the later-filed application in the manner provided
by 35 U.S.C. 112(a) (except for the requirement to disclose the best
mode) because § 1.78 pertains to claims to the benefit of a prior-
filed application and the AIA draws a distinction between being
entitled to the benefit of a prior-filed application and being entitled
to claim the benefit of a prior-filed application. See 157 Cong. Rec.
S1370 (2011) (explaining the distinction between being entitled to
actual priority or benefit for purposes of 35 U.S.C. 100(i) and being
entitled only to claim priority or benefit for purposes of 35 U.S.C.
102(d)). Nevertheless, the prior-filed application must disclose an
invention in the manner provided by 35 U.S.C. 112(a) (except for the
requirement to disclose the best mode) for the later-filed application
to receive the benefit of the filing date of the prior-filed
application under 35 U.S.C. 119(e) (or 35 U.S.C. 120) as to such
invention, and the prior-filed application must describe the subject
matter for the later-filed application to be considered effectively
filed under 35 U.S.C. 102(d) on the filing date of the prior-filed
application with respect to that subject matter.
Section 1.78(a)(1) as proposed provides that the nonprovisional
application or international application designating the United States
of America must be filed not later than twelve months after the date on
which the provisional application was filed, and that this twelve-month
period is subject to 35 U.S.C. 21(b) and 1.7(a). As discussed
previously, 35 U.S.C. 21(b) and 1.7(a) provide that when the day, or
the last day, for taking any action (e.g., filing a nonprovisional
application within twelve months of the date on which the provisional
application was filed) or paying any fee in the Office falls on
Saturday, Sunday, or a Federal holiday within the District of Columbia,
the action may be taken, or fee paid, on the next succeeding secular or
business day.
Section 1.78(a)(3) is proposed to be amended to require that if a
nonprovisional application filed on or after March 16, 2013, claims the
benefit of the filing date of a provisional application filed prior to
March 16, 2013, and also contains, or contained at any time, a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, the applicant must provide a statement to that effect within
the later of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
as set forth in § 1.491 in an international application, sixteen
months from the filing date of the prior-filed provisional application,
or the date that a first claim to a claimed invention that has an
effective filing date on or after March 16, 2013, is presented in the
application. Section 1.78(a)(3) is also proposed to be amended to
require that if a nonprovisional application filed on or after March
16, 2013, claims the benefit of the filing date of a provisional
application filed prior to March 16, 2013, does not contain a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, but discloses subject matter not also disclosed in the
provisional application, the applicant must provide a statement to that

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 417

effect within the later of four months from the actual filing date of
the later-filed application, four months from the date of entry into
the national stage as set forth in § 1.491 in an international
application, or sixteen months from the filing date of the prior-filed
provisional application.
Proposed § 1.78(a)(3) would not require that the applicant
identify how many or which claims in the nonprovisional application
have an effective filing date on or after March 16, 2013, or that the
applicant identify the subject matter in the nonprovisional application
not also disclosed in the provisional application. Proposed § 1.78(a)(3)
would require only that the applicant state that there is a
claim in the nonprovisional application that has an effective filing
date on or after March 16, 2013 (e.g., "upon reasonable belief, this
application contains at least one claim that has an effective filing
date on or after March 16, 2013"), or the applicant state that there
is subject matter in the nonprovisional application not also disclosed
in the provisional application (e.g., "upon reasonable belief, this
application contains subject matter not also disclosed in provisional
application No. XX/XXX,XXX").
If an applicant fails to timely provide such a statement and then
later indicates that the nonprovisional application contains a claim
having an effective filing date on or after March 16, 2013, or subject
matter not also disclosed in the provisional application, the Office
may issue a requirement for information under § 1.105 requiring the
applicant to identify where (by page and line or paragraph number)
there is written description support under AIA 35 U.S.C. 112(a) in the
provisional application for the remaining claims in the nonprovisional
application. Likewise, if the applicant later seeks to retract a
previous statement that the nonprovisional application contains a claim
having an effective filing date on or after March 16, 2013, or subject
matter not also disclosed in the provisional application, the Office
may issue a requirement for information under § 1.105 requiring the
applicant to identify where (by page and line or paragraph number)
there is written description support under AIA 35 U.S.C. 112(a) in the
provisional application for each claim in the nonprovisional application.
This information is needed to assist the Office in determining
whether the application is subject to 35 U.S.C. 102 and 103 as amended
by the AIA or 35 U.S.C. 102 and 103 in effect on March 15, 2013. As
discussed previously, if the Office must determine on its own the
effective filing date of every claim ever presented in an application
filed on or after March 16, 2013, that claims priority to or the
benefit of a provisional application filed prior to March 16, 2013,
examination costs will significantly increase. This proposed provision
is tailored to the transition to 35 U.S.C. 102 and 103 under the AIA.
Thus, for a nonprovisional application filed on or after March 16,
2013, that claims the benefit of the filing date of a provisional
application, the applicant would not be required to provide any
statement if: (1) The nonprovisional application discloses only subject
matter also disclosed in a provisional application filed prior to March
16, 2013; or (2) the nonprovisional application claims only the benefit
of the filing date of a provisional application filed on or after March
16, 2013.
Sections 1.78(a) and (c) as proposed require the reference to each
prior-filed application to be included in an application data sheet.
See Changes To Implement the Inventor's Oath or Declaration Provisions
of the Leahy-Smith America Invents Act, 77 FR 982, 993 (Jan. 6, 2012).
Section 1.78(a) as proposed otherwise contains the provisions of
current § 1.78(a)(4) and (a)(5).
Section 1.78(b) as proposed contains provisions relating to delayed
claims under 35 U.S.C. 119(e) for the benefit of prior-filed
provisional applications. Section 1.78(b) contains the provisions of
current § 1.78(a)(6).
Section 1.78(c) as proposed contains provisions relating to claims
under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed
nonprovisional or international application. Section 1.78(c)(1) as
proposed provides that each prior-filed application must name as the

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 418

inventor or a joint inventor an inventor named in the later-filed
application. In addition, each prior-filed application must either be:
(1) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or (2) a nonprovisional application under 35 U.S.C. 111(a)
that is entitled to a filing date as set forth in § 1.53(b) or
§ 1.53(d) for which the basic filing fee set forth in § 1.16 has been
paid within the pendency of the application (provisions from current
§ 1.78(a)(1)).
Section 1.78(c) as proposed does not contain a provision that the
prior-filed application disclose the invention claimed in at least one
claim of the later-filed application in the manner provided by 35
U.S.C. 112(a). For a later-filed application to receive the benefit of
the filing date of a prior-filed application, 35 U.S.C. 120 requires
that the prior-filed application disclose the invention claimed in at
least one claim of the later-filed application in the manner provided
by 35 U.S.C. 112(a) (except for the requirement to disclose the best
mode). As discussed previously, § 1.78 as proposed pertains to
claims to the benefit of a prior-filed application and the AIA draws a
distinction between being entitled to the benefit of a prior-filed
application and being entitled to claim the benefit of a prior-filed
application.
Section 1.78(c)(2) is proposed to be amended to clarify that
identifying the relationship of the applications means identifying
whether the later-filed application is a continuation, divisional, or
continuation-in-part of the prior-filed nonprovisional application or
international application. See MPEP § 201.11.
Section 1.78(c)(2) is also proposed to be amended to require that
if a nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a nonprovisional application
filed prior to March 16, 2013, and also contains, or contained at any
time, a claim to a claimed invention that has an effective filing date
on or after March 16, 2013, the applicant must provide a statement to
that effect within the later of four months from the actual filing date
of the later-filed application, four months from the date of entry into
the national stage as set forth in § 1.491 in an international
application, sixteen months from the filing date of the prior-filed
nonprovisional application, or the date that a first claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
is presented in the application. Section 1.78(c)(2) is also proposed to
be amended to require that if a nonprovisional application filed on or
after March 16, 2013, claims the benefit of the filing date of a
nonprovisional application filed prior to March 16, 2013, does not
contain a claim to a claimed invention that has an effective filing
date on or after March 16, 2013, but discloses subject matter not also
disclosed in the prior-filed nonprovisional application, the applicant
must provide a statement to that effect within the later of four months
from the actual filing date of the later-filed application, four months
from the date of entry into the national stage as set forth in § 1.491
in an international application, or sixteen months from the filing date
of the prior-filed nonprovisional application.
Proposed § 1.78(c)(2) would not require that the applicant
identify how many or which claims in the later-filed nonprovisional
application have an effective filing date on or after March 16, 2013,
or that the applicant identify the subject matter in the later-filed
nonprovisional application not also disclosed in the prior-filed
nonprovisional application. Proposed § 1.78(c)(2) would require
only that the applicant state that there is a claim in the later-filed
nonprovisional application that has an effective filing date on or
after March 16, 2013 (e.g., "upon reasonable belief, this application
contains at least one claim that has an effective filing date on or
after March 16, 2013"), or the applicant state that there is subject
matter in the later-filed nonprovisional application not also disclosed
in the prior-filed nonprovisional application (e.g., "upon reasonable
belief, this application contains subject matter not also disclosed in
application No. XX/XXX,XXX").

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 419

If an applicant fails to timely provide such a statement and then
later indicates that the later-filed nonprovisional application
contains a claim having an effective filing date on or after March 16,
2013, or subject matter not also disclosed in the prior-filed
nonprovisional application, the Office may issue a requirement for
information under § 1.105 requiring the applicant to identify where
(by page and line or paragraph number) there is written description
support under AIA 35 U.S.C. 112(a) in the prior-filed nonprovisional
application for the remaining claims in the later-filed nonprovisional
application. Likewise, if the applicant later seeks to retract a
previous statement that the later-filed nonprovisional application
contains a claim having an effective filing date on or after March 16,
2013, or subject matter not also disclosed in the prior-filed
nonprovisional application, the Office may issue a requirement for
information under § 1.105 requiring the applicant to identify where
(by page and line or paragraph number) there is written description
support under AIA 35 U.S.C. 112(a) in the prior-filed nonprovisional
application for each claim in the later-filed nonprovisional
application.
This information is needed to assist the Office in determining
whether the application is subject to 35 U.S.C. 102 and 103 as amended
by the AIA or 35 U.S.C. 102 and 103 in effect on March 15, 2013. As
discussed previously, if the Office must determine on its own the
effective filing date of every claim ever presented in an application
filed on or after March 16, 2013, that claims priority to or the
benefit of a nonprovisional application filed prior to March 16, 2013,
examination costs will significantly increase. This proposed provision
is tailored to the transition to 35 U.S.C. 102 and 103 under the AIA.
Thus, for a nonprovisional application filed on or after March 16,
2013, that claims the benefit of the filing date of a nonprovisional
application, the applicant would not be required to provide any
statement if: (1) The nonprovisional application discloses only subject
matter also disclosed in a prior-filed nonprovisional application filed
prior to March 16, 2013; or (2) the nonprovisional application claims
only the benefit of the filing date of a nonprovisional application
filed on or after March 16, 2013.
Sections 1.78(c)(3) through (c)(5) as proposed contain the
provisions of current § 1.78(a)(2). Section 1.78(c)(5) as proposed
also provides that cross-references to applications for which a benefit
is not claimed must not be included in an application data sheet
(§ 1.76(b)(5)). Including cross-references to applications for which a
benefit is not claimed in the application data sheet may lead the
Office to inadvertently schedule the application for publication under
35 U.S.C. 122(b) and § 1.211 et seq. on the basis of the cross-
referenced applications having the earliest filing date.
Section 1.78(d) as proposed contains provisions relating to delayed
claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of prior-
filed nonprovisional or international applications. Section 1.78(d) as
proposed contains the provisions of current § 1.78(a)(3).
Section 1.78(e) as proposed contains the provisions of current
§ 1.78(b) pertaining to applications containing conflicting claims.
Section 1.78(f) as proposed addresses applications or patents under
reexamination that name different inventors and contain patentably
indistinct claims. The provisions are similar to the provisions of
current § 1.78(c), but the language has been amended to refer to
"the effective filing date of the later claimed invention" in place
of "at the time the later invention was made" in view of the change
to a first inventor to file system.
Section 1.78(g) as proposed provides that the time periods set
forth in § 1.78 are not extendable.
Sections 1.53 and 1.76 would be amended for consistency with the
reorganization of § 1.78.
Section 1.104: Section 1.104(c)(4) is proposed to be amended to
include the provisions that pertain to commonly owned or joint research
agreement subject matter for applications subject to 35 U.S.C. 102 and

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 420

103 as amended by the AIA. Specifically, 1.104(c)(4) as proposed
implements the provisions of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C.
102(c) in the AIA. Thus, § 1.104(c)(4) as proposed is applicable to
applications that are subject to 35 U.S.C. 102 and 103 as amended by
the AIA.
Section 1.104(c)(4)(i) as proposed provides that subject matter
that qualifies as prior art under 35 U.S.C. 102(a)(2) and a claimed
invention will be treated as commonly owned for purposes of 35 U.S.C.
102(b)(2)(C) if the applicant provides a statement that the prior art
and the claimed invention, not later than the effective filing date of
the claimed invention, were owned by the same person or subject to an
obligation of assignment to the same person.
Section 1.104(c)(4)(ii) as proposed addresses joint research
agreements and provides that subject matter that qualifies as prior art
under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as
commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a
joint research agreement under 35 U.S.C. 102(c) if: (1) The applicant
provides a statement that the prior art was developed and the claimed
invention was made by or on behalf of one or more parties to a joint
research agreement, within the meaning of 35 U.S.C. 100(h) and
§ 1.9(e), that was in effect on or before the effective filing date of
the claimed invention, and the claimed invention was made as a result
of activities undertaken within the scope of the joint research
agreement; and (2) the application for patent for the claimed invention
discloses or is amended to disclose the names of the parties to the
joint research agreement.
Section 1.104(c)(5) is proposed to be amended to include the
provisions that pertain to commonly owned or joint research agreement
subject matter for applications subject to 35 U.S.C. 102 and 103 in
effect prior to the effective date of section 3 of the AIA. Thus,
§ 1.104(c)(5) as proposed is applicable to applications that are subject
to 35 U.S.C. 102 and 103 in effect prior to March 16, 2013.
Section 1.104(c)(5)(i) as proposed provides that subject matter
which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in
effect prior to March 16, 2013, and a claimed invention in an
application or a patent granted on or after December 10, 2004, will be
treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect
prior to March 16, 2013, if the applicant provides a statement to the
effect that the prior art and the claimed invention, at the time the
claimed invention was made, were owned by the same person or subject to
an obligation of assignment to the same person.
Section 1.104(c)(5)(ii) as proposed addresses joint research
agreements and provides that subject matter which qualifies as prior
art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16,
2013, and a claimed invention in an application or a patent granted on
or after December 10, 2004, will be treated as commonly owned for
purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the
basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect
prior to March 16, 2013 if: (1) the applicant provides a statement to
the effect that the prior art and the claimed invention were made by or
on behalf of the parties to a joint research agreement, within the
meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or
before the date the claimed invention was made, and that the claimed
invention was made as a result of activities undertaken within the
scope of the joint research agreement; and (2) the application for
patent for the claimed invention discloses or is amended to disclose
the names of the parties to the joint research agreement. Section
1.104(c)(5)(ii) as proposed makes reference to the definition of joint
research agreement contained in 35 U.S.C. 100(h) and § 1.9(e). The
AIA did not change the definition of a joint research agreement, but
merely moved the definition from 35 U.S.C. 103(c)(3) to 35 U.S.C.
100(h). Thus, the Office proposes to reference the definition of joint
research agreement in 35 U.S.C. 100(h) in § 1.104(c)(5)(ii) for
simplicity.
Section 1.104(c)(6) is proposed to be added to clarify that patents
issued prior to December 10, 2004, from applications filed prior to

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 421

November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on
November 28, 1999. See MPEP § 706.02(l).
The provisions of current § 1.104(c)(5) pertain to statutory
invention registrations and are thus proposed to be removed. See
discussion of the provisions of §§ 1.293 through 1.297.
Section 1.109: Section 1.109 is proposed to be added to specify the
effective filing date of a claimed invention. Section 1.109(a) as
proposed provides that the effective filing date of a claimed invention
in a patent or an application for patent, other than in a reissue
application or reissued patent, is the earliest of: (1) The actual
filing date of the patent or the application for the patent containing
a claim to the invention; or (2) the filing date of the earliest
application for which the patent or application is entitled, as to such
invention, to priority to or the benefit of an earlier filing date
under 35 U.S.C. 119, 120, 121, or 365. See 35 U.S.C. 100(i)(1). Section
1.109(b) as proposed provides that the effective filing date for a
claimed invention in a reissue application or a reissued patent is
determined by deeming the claim to the invention to have been contained
in the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
Section 1.110: Section 1.110 as proposed provides that the Office
may require information concerning the inventorship and ownership of
the subject matter of each claim when necessary for an Office
proceeding. Section 1.110 is proposed to be amended to: (1) Change the
ownership inquiry to ownership on the effective filing date rather than
ownership on the date of invention; and (2) eliminate the provision
concerning inquiring into the date of invention of the subject matter
of the claims. Section 1.110 as proposed to be amended provides that
when more than one inventor is named in an application or patent, the
Office may require an applicant or patentee to identify the inventor,
and ownership on the effective filing date, of each claimed invention
in the application or patent, when necessary for purposes of an Office
proceeding.
Section 1.130: Section 1.130 is proposed to be amended to replace
its existing provisions (which are proposed to be moved to § 1.131)
with provisions for showing attribution of a disclosure to an inventor
or joint inventor, prior disclosure, or derivation under 35 U.S.C.
102(b) as amended by the AIA. Thus, § 1.130 as proposed would apply
to applications for patent (and patents issuing thereon) that are
subject to 35 U.S.C. 102 as amended by the AIA, and § 1.131 would
apply to applications for patent (and patents issuing thereon) that are
subject to 35 U.S.C. 102 in effect on March 15, 2013 (prior to the
effective date of section 3 of the AIA).
Section 1.130(a) as proposed provides a mechanism for filing an
affidavit or declaration to establish that a disclosure is not prior
art in accordance with 35 U.S.C. 102(b) as amended by the AIA. Proposed
§ 1.130, like §§ 1.131 and 1.132, provides a mechanism for
the submission of evidence to disqualify a disclosure as prior art or
otherwise traverse a rejection. An applicant's or patent owner's compliance
with § 1.130 means that the applicant or patent owner is entitled to
have the evidence considered in determining the patentability of the
claim(s) at issue. It does not mean that the applicant or patent owner
is entitled as a matter of right to have the rejection of or objection
to the claim(s) withdrawn. See Changes to Implement the Patent Business
Goals, 65 FR 54603, 54640 (Sept. 8, 2000) (discussing procedural nature
of §§ 1.131 and 1.132).
Section 1.130(a)(1) as proposed provides for the situation in
which: (1) The disclosure on which the rejection is based was by the
inventor or joint inventor; or (2) there was a public disclosure of the
subject matter on which the rejection is based by the inventor or a
joint inventor prior to the disclosure of the subject matter on which
the rejection is based or the date the patent or application on which
the rejection is based was effectively filed.
Section 1.130(a)(2) as proposed provides for the situation in

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 422

which: (1) The disclosure on which the rejection is based was by a
party who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; or (2) the subject matter
disclosed had been publicly disclosed by a party who obtained the
subject matter disclosed directly or indirectly from the inventor prior
to the disclosure of the subject matter on which the rejection is based
or the date the patent or application on which the rejection is based
was effectively filed.
Section 1.130(b) as proposed pertains to affidavits or declarations
under § 1.130(a)(1) in the situation in which the disclosure on
which the rejection is based was by the inventor or joint inventor.
Section 1.130(b) as proposed provides that if the disclosure on which
the rejection is based is by the inventor or a joint inventor, the
affidavit or declaration under § 1.130(a)(1) must provide a
satisfactory showing that the inventor or a joint inventor is in fact
the inventor of the subject matter of the disclosure. The applicant or
patent owner must provide a satisfactory showing that the inventor or a
joint inventor is the actual inventor of the subject matter of the
disclosure. See In re Katz, 687 F.2d 450, 455 (CCPA 1982). Where the
authorship of the reference disclosure includes the inventor or a joint
inventor named in the application, an "unequivocal" statement from
the inventor or a joint inventor that he/she (or some specific
combination of named inventors) invented the subject matter of the
disclosure, accompanied by a reasonable explanation of the presence of
additional authors, may be acceptable in the absence of evidence to the
contrary. See In re DeBaun, 687 F.2d 459, 463 (CCPA 1982). However, a
mere statement from the inventor or a joint inventor may not be
sufficient where there is evidence to the contrary. See Ex parte
Kroger, 218 USPQ 370 (Bd. App. 1982) (rejection affirmed
notwithstanding declarations by the alleged actual inventors as to
their inventorship in view of a nonapplicant author submitting a letter
declaring the nonapplicant author's inventorship). This is similar to
the current process for disqualifying a publication as not being by
"others" discussed in MPEP § 2132.01, except that 35 U.S.C.
102(b)(1) requires only that the disclosure be by the inventor or a
joint inventor.
Section 1.130(c) as proposed pertains to affidavits or declarations
under § 1.130(a)(1) in the situation in which the disclosure on
which the rejection is based is not by the inventor or a joint
inventor, and thus the applicant or patent owner is attempting to
overcome the rejection by showing an earlier public disclosure of the
subject matter on which the rejection is based by the inventor or a
joint inventor. Section 1.130(c) as proposed provides that in this
situation the affidavit or declaration must identify and provide the
date of the earlier disclosure of the subject matter by the inventor or
a joint inventor and provide a satisfactory showing that the inventor
or a joint inventor is the inventor of the subject matter of the
earlier disclosure. Section 1.130(c) as proposed also provides that if
the earlier disclosure was a printed publication, the affidavit or
declaration must be accompanied by a copy of the printed publication.
Section 1.130(c) as proposed further provides that if the earlier
disclosure was not a printed publication, the affidavit or declaration
must describe the disclosure with sufficient detail and particularity
to determine that the disclosure is a public disclosure of the subject
matter on which the rejection is based. The Office needs these details
to determine not only whether the inventor is entitled to disqualify
the disclosure under 35 U.S.C. 102(b), but also because if the
rejection is based upon a U.S. patent application publication or WIPO
published application of another application and such other application
is also pending before the Office, this prior disclosure may be prior
art under 35 U.S.C. 102(a) to the other application and the Office may
need this information to avoid granting two patents on the same
invention.
Section 1.130(d) as proposed pertains to affidavits or declarations
under § 1.130(a)(2) in the situation in which the disclosure on
which the rejection is based was by a party who obtained the subject

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 423

matter disclosed directly or indirectly from the inventor or a joint
inventor. Section 1.130(d) as proposed provides that if the disclosure
on which the rejection is based is by a party who obtained the subject
matter disclosed directly or indirectly from the inventor, an affidavit
or declaration under § 1.130(a)(2) (alleging derivation) must
provide a satisfactory showing that the inventor or a joint inventor is
the inventor of the subject matter of the disclosure and directly or
indirectly communicated the subject matter of the disclosure to the
party. Specifically, the applicant or patent owner must show that a
named inventor actually invented the subject matter of the disclosure.
See In re Facius, 408 F.2d 1396, 1407 (CCPA 1969). The applicant or
patent owner must also show a direct or indirect communication of the
subject matter of the disclosure to the party sufficient to enable one
of ordinary skill in the art to make the subject matter of the claimed
invention. See Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d
1573, 1577 (Fed. Cir. 1997). This is similar to the current process for
disqualifying a publication as being derived from the inventor
discussed in MPEP § 2137.
Section 1.130(e) as proposed pertains to affidavits or declarations
under § 1.130(a)(2) in the situation in which the disclosure on
which the rejection is based is not by a party who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint
inventor, and thus the applicant or patent owner is attempting to
overcome the rejection by showing an earlier public disclosure of the
subject matter on which the rejection is based by a party who obtained
the subject matter disclosed directly or indirectly from the inventor
or a joint inventor. Section 1.130(e) as proposed provides that in this
situation an affidavit or declaration under § 1.130(a)(2) must
identify and provide the date of the earlier disclosure of the subject
matter by the party who obtained the subject matter disclosed directly
or indirectly from the inventor or a joint inventor and must also
provide a satisfactory showing that the inventor or a joint inventor is
the inventor of the subject matter of the earlier disclosure and
directly or indirectly communicated the subject matter of the
disclosure to the party. Section 1.130(e) as proposed also provides
that if the earlier disclosure was a printed publication, the affidavit
or declaration must be accompanied by a copy of the printed
publication. Section 1.130(c) as proposed further provides that if the
earlier disclosure was not a printed publication, the affidavit or
declaration must describe the disclosure with sufficient detail and
particularity to determine that the disclosure is a public disclosure
of the subject matter on which the rejection is based. This is the same
requirement as in § 1.130(c).
Section 1.130 as proposed does not contain a provision that
"[o]riginal exhibits of drawings or records, or photocopies thereof,
must accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained" (cf. § 1.131(b)),
because in some situations an affidavit or declaration under § 1.130
does not necessarily need to be accompanied by such exhibits
(e.g., a statement by the inventor may be sufficient). However, in
situations where evidence is required, such exhibits must accompany an
affidavit or declaration under § 1.130. In addition, an affidavit
or declaration under § 1.130 must be accompanied by any exhibits
that the applicant or patent owner wishes to rely upon.
Section 1.130(f) as proposed provides that the provisions of
§ 1.130 are not available if the rejection is based upon a disclosure
made more than one year before the effective filing date of the claimed
invention. This provision is because a disclosure made more than one
year before the effective filing date of the claimed invention is prior
art under 35 U.S.C. 102(a)(1), and may not be disqualified under 35
U.S.C. 102(b)(1). Note that the provisions of § 1.130 are available
to establish that a rejection under 35 U.S.C. 102(a)(2) is based on an
application or patent that was effectively filed more than one year
before the effective filing date of the application under examination,
but not publicly disclosed more than one year before such effective
filing date, where the subject matter disclosed was obtained directly

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 424

or indirectly from the inventor or a joint inventor. As stated
previously, if the application or patent was published more than one
year before the effective filing date of the application under
examination, the applicant would not be able to remove the reference as
prior art under 35 U.S.C. 102(a)(1).
Section 1.130(f) as proposed also provides that the Office may
require the applicant to file a petition for a derivation proceeding
pursuant to § 42.401 et seq. of this title if the rejection is
based upon a U.S. patent or U.S. patent application publication of a
patented or pending application naming another inventor and the patent
or pending application claims an invention that is the same or
substantially the same as the applicant's claimed invention. Thus, the
Office would not require the applicant to file a petition for a
derivation proceeding if the rejection is based upon a disclosure other
than a U.S. patent or U.S. patent application publication (such as
nonpatent literature or a foreign patent document), and would not
require the applicant to file a petition for a derivation proceeding if
the rejection is based upon a U.S. patent or U.S. patent application
and the patent or pending application did not claim an invention that
is the same or substantially the same as the applicant's claimed
invention.
Section 1.130(g) as proposed provides that the provisions of
§ 1.130 apply to applications for patent, and to any patent issuing
thereon, that is subject to 35 U.S.C. 102 as amended by the AIA.
Section 1.131: The title of § 1.131 is proposed to be amended
to also cover the provisions of current § 1.130.
Section 1.131(a) is proposed to be amended to refer to 35 U.S.C.
102(e) as 35 U.S.C. 102(e) in effect on March 15, 2013.
Section 1.131(b) is proposed to be amended to provide that the
showing of facts provided for in § 1.131(b) is applicable to an
oath or declaration under § 1.131(a).
Section 1.131(c) is proposed to be added to include the current
provisions of § 1.130, but revised to refer to 35 U.S.C. 102(b) as
35 U.S.C. 102(b) in effect on March 15, 2013, and to refer to 35 U.S.C.
104 as 35 U.S.C. 104 in effect on March 15, 2013.
Section 1.131(d) is proposed to be added to provide that the
provisions of § 1.131 apply to applications for patent, and to any
patent issuing thereon, that contains, or contained at any time: (1) A
claim to a claimed invention that has an effective filing date as
defined in 35 U.S.C. 100(i) that is before March 16, 2013; or (2) a
specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or
application that contains, or contained at any time, a claim to a
claimed invention that has an effective filing date as defined in 35
U.S.C. 100(i) that is before March 16, 2013.
Section 1.131(e) is proposed to be added to provide that, in an
application for patent to which the provisions of § 1.130 apply,
and to any patent issuing thereon, the provisions of § 1.131 are
applicable only with respect to a rejection under 35 U.S.C. 102(g) in
effect on March 15, 2013. Section 1.130(g) as proposed provides that
the provisions of § 1.130 apply to applications for patent, and to
any patent issuing thereon, that is subject to 35 U.S.C. 102 as amended
by the AIA. The date of invention is not relevant under the 35 U.S.C.
102 as amended by the AIA. Thus, in an application for patent to which
the provisions of § 1.130 apply, and to any patent issuing thereon,
a prior art disclosure under 35 U.S.C. 102 as amended by the AIA could
not be disqualified or antedated under the provisions of § 1.131 by
showing that the inventor previously invented the claimed subject
matter.
Sections 1.293 through 1.297: The AIA repeals the provisions of 35
U.S.C. 157 pertaining to statutory invention registrations. Thus, the
statutory invention registration provisions of §§ 1.293 through
1.297 are proposed to be removed. The Office would also amend the rules
of practice (e.g., §§ 1.17, 1.53, 1.84, 1.103, and 1.104) to
delete any reference to a statutory invention registration.

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 425

Section 1.321: Section 1.321(d) is proposed to be amended to change
35 U.S.C. 103(c) to 35 U.S.C. 102(c) to be consistent with the changes
to 35 U.S.C. 102 and 103 as amended by the AIA.
Rulemaking Considerations
A. Administrative Procedure Act: The changes being proposed in this
notice do not change the substantive criteria of patentability. These
proposed changes involve rules of agency practice and procedure and/or
interpretive rules. See Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(DC Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v.
Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals
were procedural where they did not change the substantive standard for
reviewing claims); Nat'l Org. of Veterans' Advocates v. Sec'y of
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that
clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rulemaking for "interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice") (quoting 5 U.S.C. 553(b)(A)). The Office,
however, is publishing these proposed changes as it seeks the benefit
of the public's views on the Office's proposed implementation of these
provisions of the AIA.
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public comment are not required pursuant to 5 U.S.C. 553 or any
other law, neither a regulatory flexibility analysis nor a
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et
seq.) is required. See 5 U.S.C. 603.
Nevertheless, for the reasons set forth herein, the Deputy General
Counsel for General Law of the United States Patent and Trademark
Office has certified to the Chief Counsel for Advocacy of the Small
Business Administration that changes proposed in this notice will not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b). As discussed previously, the Office is
proposing the following changes to address the examination issues
raised by the changes in section 3 of the AIA.
The Office is providing for the submission of affidavits or
declarations showing that: (1) A disclosure upon which a claim
rejection is based was by the inventor or joint inventor or by a party
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor; or (2) there was a prior public
disclosure by the inventor or a joint inventor or another who obtained
the subject matter disclosed directly or indirectly from the inventor
or a joint inventor of an application. The requirements of these
proposed provisions are comparable to the current requirements for
affidavits and declarations under 37 CFR 1.131 and 1.132 for an
applicant to show that a prior art disclosure is the applicant's own
work (see case law cited in MPEP § 2132.01) or that a disclosure
was derived from the applicant (see case law cited in MPEP § 2137).
In addition, the changes proposed in this notice would not result in
additional small entities being subject to the need to submit such an
affidavit or declaration.
The Office is also proposing to require that the certified copy of
the foreign application be filed within the later of four months from
the actual filing date of the application or sixteen months from the
filing date of the prior foreign application. An applicant is currently
required to file the certified copy of the foreign application when
deemed necessary by the examiner, but no later than the date the patent
is granted (37 CFR 1.55(a)). The proposed time period of four months
from the actual filing date of the application or sixteen months from

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 426

the filing date of the prior foreign application should not have a
significant economic impact as sixteen months from the filing date of
the prior foreign application is the international norm for when the
certified copy of the foreign application needs to be filed in an
application (PCT Rule 17). Based upon the data in the Office's Patent
Application Locating and Monitoring (PALM) system, 354,248 (98,902
small entity) nonprovisional applications were filed in FY 2011. Of
these, 69,733 (7,943 small entity) nonprovisional applications claimed
the benefit of a foreign priority application, and 65,900 (15,031 small
entity) nonprovisional applications resulted from the entry of an
international application into the national stage.
The Office is also proposing the following requirements for
nonprovisional applications filed on or after March 16, 2013, that
claim the benefit of the filing date of a foreign, provisional, or
nonprovisional application filed prior to March 16, 2013: (1) If such a
nonprovisional application contains at any time a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
the applicant must provide a statement to that effect within the later
of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
in an international application, sixteen months from the filing date of
the prior-filed application, or the date that a first claim to a
claimed invention that has an effective filing date on or after March
16, 2013, is presented in the application; and (2) if such a
nonprovisional application does not contain a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
but discloses subject matter not also disclosed in the foreign,
provisional, or nonprovisional application, the applicant must provide
a statement to that effect within the later of four months from the
actual filing date of the later-filed application, four months from the
date of entry into the national stage in an international application,
or sixteen months from the filing date of the prior-filed application.
Based upon the data in the Office's PALM system, of the 354,248
(98,902 small entity) nonprovisional applications filed in FY 2011,
11,557 (6,833 small entity) nonprovisional applications were identified
as continuation-in-part applications, 47,380 (12,444 small entity)
nonprovisional applications were identified as continuation
applications, 21,943 (4,934 small entity) nonprovisional applications
were identified as divisional applications, and 55,492 (27,367 small
entity) nonprovisional applications claimed the benefit of provisional
application. As discussed above, 69,733 (7,943 small entity)
nonprovisional applications claimed the benefit of a foreign priority
application, and 65,900 (15,031 small entity) nonprovisional
applications resulted from the entry of an international application
into the national stage. The Office's experience is that the majority
of nonprovisional applications that claim the benefit of the filing
date of a foreign, provisional, or nonprovisional application do not
disclose or claim subject matter not also disclosed in the foreign,
provisional, or nonprovisional application, but the Office generally
makes such determinations only when necessary to the examination of the
nonprovisional application. See, e.g., MPEP § 201.08 ("Unless the
filing date of the earlier nonprovisional application is actually
needed, for example, in the case of an interference or to overcome a
reference, there is no need for the Office to make a determination as
to whether the requirement of 35 U.S.C. 120, that the earlier
nonprovisional application discloses the invention of the second
application in the manner provided by the first paragraph of 35 U.S.C.
112, is met and whether a substantial portion of all of the earlier
nonprovisional application is repeated in the second application in a
continuation-in-part situation"). In any event, Office staff with
experience and expertise in a wide range of patent prosecution matters
as patent practitioners estimate that this will require, on average, an
additional two hours for a practitioner who drafted the later-filed
application (including the claims) and is familiar with the prior
foreign, provisional, or nonprovisional application.
Accordingly, the changes proposed in this notice will not have a

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 427

significant economic impact on a substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on society
consistent with obtaining the regulatory objectives; (3) selected a
regulatory approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6) involved
the public in an open exchange of information and perspectives among experts
in relevant disciplines, affected stakeholders in the private sector, and
the public as a whole, and provided on-line access to the rulemaking
docket; (7) attempted to promote coordination, simplification, and
harmonization across government agencies and identified goals designed
to promote innovation; (8) considered approaches that reduce burdens
and maintain flexibility and freedom of choice for the public; and
(9) ensured the objectivity of scientific and technological information and
processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the final rule and other required information to the United
States Senate, the United States House of Representatives, and the
Comptroller General of the Government Accountability Office. The
changes in this notice are not expected to result in an annual effect
on the economy of 100 million dollars or more, a major increase in

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 428

costs or prices, or significant adverse effects on competition,
employment, investment, productivity, innovation, or the ability of
United States-based enterprises to compete with foreign-based
enterprises in domestic and export markets. Therefore, this notice is
not expected to result in a "major rule" as defined in 5 U.S.C.
804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This rulemaking involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).
The collection of information involved in this notice has been
submitted to OMB under OMB control number 0651-00xx. The collection of
information submitted to OMB under OMB control number 0651-00xx also
includes information collections (e.g., affidavits and declarations
under 37 CFR 1.130, 1.131, and 1.132) previously approved and currently
being reviewed under OMB control number 0651-0031. The proposed
collection will be available at OMB's Information Collection Review Web
site (www.reginfo.gov/public/do/PRAMain).
Title of Collection: Matters Related to First Inventor to File.
OMB Control Number: 0651-00xx.
Needs and Uses: This information collection is necessary so that
patent applicants and/or patentees may: (1) Provide a statement if a
nonprovisional application filed on or after March 16, 2013, claims the
benefit of the filing date of a foreign, provisional, or nonprovisional
application filed prior to March 16, 2013, and also contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013; (2) provide a
statement if a nonprovisional application filed on or after March 16,
2013, claims the benefit of the filing date of a foreign, provisional,
or nonprovisional application filed prior to March 16, 2013, does not
contain a claim to a claimed invention that has an effective filing
date on or after March 16, 2013, but discloses subject matter not also
disclosed in the foreign, provisional, or nonprovisional application;
(3) identify the inventor, and ownership on the effective filing date,
of each claimed invention in an application or patent with more than
one named inventor, when necessary for purposes of an Office
proceeding; and (4) show that a disclosure was by the inventor or joint
inventor, or was by a party who obtained the subject matter from the
inventor or a joint inventor, or that there was a prior public
disclosure by the inventor or a joint inventor, or by a party who

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 429

obtained the subject matter from the inventor or a joint inventor.
The Office will use the statement that a nonprovisional application
filed on or after March 16, 2013, that claims the benefit of the filing
date of a foreign, provisional, or nonprovisional application filed
prior to March 16, 2013, contains, or contained at any time, a claim to
a claimed invention that has an effective filing date on or after March
16, 2013, to readily determine whether the nonprovisional application
is subject to the changes to 35 U.S.C. 102 and 103 in the AIA. The
Office will also use the statement that a nonprovisional application
filed on or after March 16, 2013, that claims the benefit of the filing
date of a foreign, provisional, or nonprovisional application filed
prior to March 16, 2013, does not contain a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
but discloses subject matter not also disclosed in the foreign, provisional,
or nonprovisional application (or lack of such a statement) to readily
determine whether the nonprovisional application is subject to the changes
to 35 U.S.C. 102 and 103 in the AIA. The Office will use the identification
of the inventor, and ownership on the effective filing date, when it is
necessary to determine whether a U.S. patent or U.S. patent application
publication resulting from another nonprovisional application qualifies
as prior art under 35 U.S.C. 102(a)(2). The Office will use information
concerning whether a disclosure was by the inventor or joint inventor,
or was by a party who obtained the subject matter from the inventor or
a joint inventor, or that there was a prior public disclosure by the
inventor or a joint inventor, or by a party who obtained the subject
matter from the inventor or a joint inventor, to determine whether the
disclosure qualifies as prior art under 35 U.S.C. 102(a)(1) or (a)(2).
Method of Collection: By mail, facsimile, hand delivery, or
electronically to the Office.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Respondents: 189,150 responses per year.
Estimated Time per Response: The Office estimates that the
responses in this collection will take the public from 1 to 10 hours.
Specifically, the Office estimates that: (1) Preparing an affidavit or
declaration under 37 CFR 1.130, 1.131, or 1.132 will require, on
average, 10 hours; (2) identifying under 37 CFR 1.55(a)(4), 1.78(a)(3),
or 1.78(c)(2) whether there is any claim or subject matter not
disclosed in the prior foreign, provisional, or nonprovisional
application will require, on average, 2 hours; and (3) identifying
under 37 CFR 1.110 inventorship and ownership of the subject matter of
claims will require, on average, 2 hours.
Estimated Total Annual Respondent Burden Hours: 778,300 hours per
year.
Estimated Total Annual Respondent Cost Burden: $288,749,300 per
year.
The Office is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the Office, including whether the
information will have practical utility; (2) evaluate the accuracy of
the Office's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Please send comments on or before September 24, 2012 to Mail Stop
Comments - Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA, 22313-1450, marked to the attention of Raul Tamayo, Legal Advisor,
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy. Comments should also be
submitted to the Office of Information and Regulatory Affairs, Office
of Management and Budget, New Executive Office Building, Room 10202,
725 17th Street NW., Washington, DC 20503, Attention: Desk Officer for
the Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 430

to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act, unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of information,
Inventions and patents, Reporting and recordkeeping requirements, Small
businesses.
For the reasons stated in the preamble, the USPTO proposes to amend
1 CFR part 37 as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.9 is amended by adding paragraphs (d), (e) and (f) to
read as follows:
§ 1.9 Definitions.
* * * * *
(d)(1) The term inventor or inventorship as used in this chapter
means the individual or, if a joint invention, the individuals
collectively who invented or discovered the subject matter of the
invention.
(2) The term joint inventor or coinventor as used in this chapter
means any one of the individuals who invented or discovered the subject
matter of a joint invention.
(e) The term joint research agreement as used in this chapter means
a written contract, grant, or cooperative agreement entered into by two
or more persons or entities for the performance of experimental,
developmental, or research work in the field of the claimed invention.
(f) The term claimed invention as used in this chapter means the
subject matter defined by a claim in a patent or an application for a
patent.
* * * * *
3. Section 1.53 is amended by revising paragraph (j) to read as
follows:
§ 1.53 Application number, filing date, and completion of
application.
* * * * *
(j) Filing date of international application. The filing date of an
international application designating the United States of America is
treated as the filing date in the United States of America under PCT
Article 11(3).
4. Section 1.55 is amended by revising paragraphs (a), (c), and
(d), and by adding paragraphs (e) and (f) to read as follows:
§ 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the
benefit of the filing date of one or more prior foreign applications
under the conditions specified in 35 U.S.C. 119(a) through (d) and (f),
172, and 365(a) and (b).
(1) The nonprovisional application must be filed not later than
twelve months after the date on which the foreign application was

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 431

filed. This twelve-month period is subject to 35 U.S.C. 21(b) and
§ 1.7(a).
(2) In an original application filed under 35 U.S.C. 111(a), the
claim for priority as well as a certified copy of the foreign
application must both be filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application. The claim for priority must be
presented in an application data sheet (§ 1.76(b)(6)). The claim
must identify the foreign application for which priority is claimed, as
well as any foreign application for the same subject matter having a
filing date before that of the application for which priority is
claimed, by specifying the application number, country (or intellectual
property authority), day, month, and year of its filing. The time
periods in this paragraph do not apply in an application under 35
U.S.C. 111(a) if the application is:
(i) A design application; or
(ii) An application filed before November 29, 2000.
(3) In an application that entered the national stage from an
international application after compliance with 35 U.S.C. 371, the
claim for priority must be made and a certified copy of the foreign
application filed within the time limit set forth in the PCT and the
Regulations under the PCT.
(4) If a nonprovisional application filed on or after March 16,
2013, claims the benefit of the filing date of a foreign application
filed prior to March 16, 2013, and also contains, or contained at any
time, a claim to a claimed invention that has an effective filing date
on or after March 16, 2013, the applicant must provide a statement to
that effect within the later of four months from the actual filing date
of the application, four months from the date of entry into the
national stage as set forth in § 1.491 in an international
application, sixteen months from the filing date of the prior foreign
application, or the date that a first claim to a claimed invention that
has an effective filing date on or after March 16, 2013, is presented
in the application. In addition, if a nonprovisional application filed
on or after March 16, 2013, claims the benefit of the filing date of a
foreign application filed prior to March 16, 2013, does not contain a
claim to a claimed invention that has an effective filing date on or
after March 16, 2013, but discloses subject matter not also disclosed
in the foreign application, the applicant must provide a statement to
that effect within the later of four months from the actual filing date
of the later-filed application, four months from the date of entry into
the national stage as set forth in 1.491 in an international
application, or sixteen months from the filing date of the prior
foreign application.
* * * * *
(c) Unless such claim is accepted in accordance with the provisions
of this paragraph, any claim for priority under 35 U.S.C. 119(a)
through (d) or (f), or 365(a) or (b), not presented in an application
data sheet (§ 1.76(b)(6)) within the time period provided by
paragraph (a)(2) of this section is considered to have been waived. If
a claim for priority under 35 U.S.C. 119(a) through (d) or (f), or
365(a) or (b) is presented after the time period provided by paragraph
(a)(2) of this section, the claim may be accepted if the claim
identifying the prior foreign application by specifying its application
number, country (or intellectual property authority), and the day,
month, and year of its filing was unintentionally delayed. A petition
to accept a delayed claim for priority under 35 U.S.C. 119(a) through
(d) or (f), or 365(a) or (b), must be accompanied by:
(1) The claim under 35 U.S.C. 119(a) through (d) or (f), or 365(a)
or (b), and this section to the prior foreign application, unless
previously submitted;
(2) A certified copy of the foreign application, unless previously
submitted;
(3) The surcharge set forth in § 1.17(t); and
(4) A statement that the entire delay between the date the claim
was due under paragraph (a) of this section and the date the claim was

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 432

filed was unintentional. The Director may require additional information
where there is a question whether the delay was unintentional.
(d)(1) The requirement in this section for the certified copy of
the foreign application will be considered satisfied if:
(i) The applicant files a request, in a separate document, that the
Office obtain a copy of the foreign application from a foreign
intellectual property office participating with the Office in a
bilateral or multilateral priority document exchange agreement
(participating foreign intellectual property office (see § 1.14 (h)(1));
(ii) The foreign application is identified in an application data
sheet (§ 1.76(a)(6)); and
(iii) The copy of the foreign application is received by the Office
within the period set forth in paragraph (a) of this section or by such
later time as may be set by the Office.
(2) If the foreign application was filed at a foreign intellectual
property office that is not participating with the Office in a priority
document exchange agreement, but a copy of the foreign application was
filed in an application subsequently filed in a participating foreign
intellectual property office, the request under paragraph (d)(1)(i) of
this section must identify the participating foreign intellectual
property office and the application number of the subsequent
application in which a copy of the foreign application was filed.
(e)(1) The claim for priority and the certified copy of the foreign
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any
event, be filed within the pendency of the application and before the
patent is granted. If the claim for priority or the certified copy of
the foreign application is filed after the date the issue fee is paid,
it must be accompanied by the processing fee set forth in § 1.17(i), but
the patent will not include the priority claim unless corrected by a
certificate of correction under 35 U.S.C. 255 and § 1.323.
(2) The Office may require that the claim for priority and the
certified copy of the foreign application be filed earlier than
provided in paragraph (a) or (e)(1) of this section:
(i) When the application is involved in an interference (see § 41.202
of this title) or derivation (see part 42 of this title) proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language
foreign application is not required except:
(i) When the application is involved in an interference (see § 41.202
of this title) or derivation (see part 42 of this title) proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When specifically required by the examiner.
(4) If an English language translation of a non-English language
foreign application is required, it must be filed together with a
statement that the translation of the certified copy is accurate.
(f) The time periods set forth in this section are not extendable.
5. Section 1.71 is amended by revising paragraph (g)(1) to read as
follows:
1.71 Detailed description and specification of the invention.
* * * * *
(g)(1) The specification may disclose or be amended to disclose the
names of the parties to a joint research agreement (35 U.S.C. 102(c)(3)).
* * * * *
6. Section 1.77 is amended by redesignating paragraphs (b)(6)
through (b)(12) as paragraphs (b)(7) through (b)(13) and adding a new
paragraph (b)(6) to read as follows:
§ 1.77 Arrangement of application elements.

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 433

* * * * *
(b) * * *
(6) Statement regarding prior disclosures by the inventor or a
joint inventor.
* * * * *
7. Section 1.78 is revised to read as follows:
§ 1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application. A nonprovisional application, other than for a
design patent, or an international application designating the United
States of America may claim the benefit of one or more prior-filed
provisional applications under the conditions set forth in 35 U.S.C.
119(e) and paragraph (a) of this section.
(1) The nonprovisional application or international application
designating the United States of America must be filed not later than
twelve months after the date on which the provisional application was
filed. This twelve-month period is subject to 35 U.S.C. 21(b) and § 1.7(a).
(2) Each prior-filed provisional application must name as the
inventor or a joint inventor an inventor named in the later-filed
application. In addition, each prior-filed provisional application must
be entitled to a filing date as set forth in § 1.53(c) and the
basic filing fee set forth in § 1.16(d) must have been paid for
such provisional application within the time period set forth in § 1.53(g).
(3) Any nonprovisional application or international application
designating the United States of America that claims the benefit of one
or more prior-filed provisional applications must contain, or be
amended to contain, a reference to each such prior-filed provisional
application, identifying it by the provisional application number
(consisting of series code and serial number). If the later-filed
application is a nonprovisional application, the reference required by
this paragraph must be included in an application data sheet
(§ 1.76(b)(5)). If a nonprovisional application filed on or after March
16, 2013, claims the benefit of the filing date of a provisional
application filed prior to March 16, 2013, and also contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect within the later of four months from
the actual filing date of the later-filed application, four months from
the date of entry into the national stage as set forth in § 1.491
in an international application, sixteen months from the filing date of
the prior-filed provisional application, or the date that a first claim
to a claimed invention that has an effective filing date on or after
March 16, 2013, is presented in the application. In addition, if a
nonprovisional application filed on or after March 16, 2013, claims the
benefit of the filing date of a provisional application filed prior to
March 16, 2013, does not contain a claim to a claimed invention that
has an effective filing date on or after March 16, 2013, but discloses
subject matter not also disclosed in the provisional application, the
applicant must provide a statement to that effect within the later of
four months from the actual filing date of the later-filed application,
four months from the date of entry into the national stage as set forth
in § 1.491 in an international application, or sixteen months from
the filing date of the prior-filed provisional application.
(4) The reference required by paragraph (a)(3) of this section must
be submitted during the pendency of the later-filed application. If the
later-filed application is an application filed under 35 U.S.C. 111(a),
this reference must also be submitted within the later of four months
from the actual filing date of the later-filed application or sixteen
months from the filing date of the prior-filed provisional application.
If the later-filed application is a nonprovisional application entering
the national stage from an international application under 35 U.S.C.
371, this reference must also be submitted within the later of four

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 434

months from the date on which the national stage commenced under 35
U.S.C. 371(b) or (f) in the later-filed international application or
sixteen months from the filing date of the prior-filed provisional
application. Except as provided in paragraph (b) of this section,
failure to timely submit the reference is considered a waiver of any
benefit under 35 U.S.C. 119(e) of the prior-filed provisional
application. The time periods in this paragraph do not apply if the
later-filed application is:
(i) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(ii) An international application filed under 35 U.S.C. 363 before
November 29, 2000.
(5) If the prior-filed provisional application was filed in a
language other than English and both an English-language translation of
the prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application, applicant will be notified and given a period
of time within which to file the translation and the statement in the
prior-filed provisional application. If the notice is mailed in a
pending nonprovisional application, a timely reply to such a notice
must include either a confirmation that the translation and statement
were filed in the provisional application or an application data sheet
withdrawing the benefit claim to avoid abandonment of the
nonprovisional application. The translation and statement may be filed
in the provisional application, even if the provisional application has
become abandoned.
(b) Delayed claims under 35 U.S.C. 119(e) for the benefit of a
prior-filed provisional application. If the reference required by 35
U.S.C. 119(e) and paragraph (a)(3) of this section is presented in a
nonprovisional application after the time period provided by paragraph
(a)(4) of this section, the claim under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application may be accepted if
submitted during the pendency of the later-filed application and if the
reference identifying the prior-filed application by provisional
application number was unintentionally delayed. A petition to accept an
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of
a prior-filed provisional application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3)
of this section to the prior-filed provisional application, unless
previously submitted;
(2) The surcharge set forth in § 1.17(t); and
(3) A statement that the entire delay between the date the claim
was due under paragraph (a)(4) of this section and the date the claim
was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(c) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a
prior-filed nonprovisional or international application. A
nonprovisional application (including an international application
entering the national stage under 35 U.S.C. 371) may claim the benefit
of one or more prior-filed copending nonprovisional applications or
international applications designating the United States of America
under the conditions set forth in 35 U.S.C. 120 and paragraph (c) of
this section.
(1) Each prior-filed application must name as the inventor or a
joint inventor an inventor named in the later-filed application. In
addition, each prior-filed application must either be:
(i) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or
(ii) A nonprovisional application under 35 U.S.C. 111(a) that is
entitled to a filing date as set forth in § 1.53(b) or § 1.53(d)
for which the basic filing fee set forth in § 1.16 has been paid within
the pendency of the application.
(2) Except for a continued prosecution application filed under
§ 1.53(d), any nonprovisional application, or international

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 435

application designating the United States of America, that claims the
benefit of one or more prior-filed nonprovisional applications or
international applications designating the United States of America
must contain or be amended to contain a reference to each such prior-
filed application, identifying it by application number (consisting of
the series code and serial number) or international application number
and international filing date. If the later-filed application is a
nonprovisional application, the reference required by this paragraph
must be included in an application data sheet (§ 1.76(b)(5)). The
reference must also identify the relationship of the applications,
namely, whether the later-filed application is a continuation,
divisional, or continuation-in-part of the prior-filed nonprovisional
application or international application. If a nonprovisional
application filed on or after March 16, 2013, claims the benefit of the
filing date of a nonprovisional application filed prior to March 16,
2013, and also contains, or contained at any time, a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
the applicant must provide a statement to that effect within the later
of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage
as set forth in § 1.491 in an international application, sixteen
months from the filing date of the prior-filed nonprovisional
application, or the date that a first claim to a claimed invention that
has an effective filing date on or after March 16, 2013, is presented
in the application. In addition, if a nonprovisional application filed
on or after March 16, 2013, claims the benefit of the filing date of a
nonprovisional application filed prior to March 16, 2013, does not
contain a claim to a claimed invention that has an effective filing
date on or after March 16, 2013, but discloses subject matter not also
disclosed in the prior-filed nonprovisional application, the applicant
must provide a statement to that effect within the later of four months
from the actual filing date of the later-filed application, four months
from the date of entry into the national stage as set forth in
§ 1.491 in an international application, or sixteen months from the
filing date of the prior-filed nonprovisional application.
(3) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of
this section must be submitted during the pendency of the later-filed
application. If the later-filed application is an application filed
under 35 U.S.C. 111(a), this reference must also be submitted within
the later of four months from the actual filing date of the later-filed
application or sixteen months from the filing date of the prior-filed
application. If the later-filed application is a nonprovisional
application entering the national stage from an international
application under 35 U.S.C. 371, this reference must also be submitted
within the later of four months from the date on which the national
stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed
international application or sixteen months from the filing date of the
prior-filed application. Except as provided in paragraph (d) of this
section, failure to timely submit the reference required by 35 U.S.C.
120 and paragraph (c)(2) of this section is considered a waiver of any
benefit under 35 U.S.C. 120, 121, or 365(c) to the prior-filed
application. The time periods in this paragraph do not apply if the
later-filed application is:
(i) An application for a design patent;
(ii) An application filed under 35 U.S.C. 111(a) before November
29, 2000; or
(iii) An international application filed under 35 U.S.C. 363 before
November 29, 2000.
(4) The request for a continued prosecution application under
§ 1.53(d) is the specific reference required by 35 U.S.C. 120 to the
prior-filed application. The identification of an application by
application number under this section is the identification of every
application assigned that application number necessary for a specific
reference required by 35 U.S.C. 120 to every such application assigned
that application number.
(5) Cross-references to other related applications may be made when

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 436

appropriate (see § 1.14), but cross-references to applications for
which a benefit is not claimed under title 35, United States Code, must
not be included in an application data sheet (§ 1.76(b)(5)).
(d) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the
benefit of a prior-filed nonprovisional application or international
application. If the reference required by 35 U.S.C. 120 and paragraph
(c)(2) of this section is presented after the time period provided by
paragraph (c)(3) of this section, the claim under 35 U.S.C. 120, 121,
or 365(c) for the benefit of a prior-filed copending nonprovisional
application or international application designating the United States
of America may be accepted if the reference identifying the prior-filed
application by application number or international application number
and international filing date was unintentionally delayed. A petition
to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or
365(c) for the benefit of a prior-filed application must be accompanied
by:
(1) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of
this section to the prior-filed application, unless previously
submitted;
(2) The surcharge set forth in § 1.17(t); and
(3) A statement that the entire delay between the date the claim
was due under paragraph (c)(3) of this section and the date the claim
was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(e) Applications containing conflicting claims. Where two or more
applications filed by the same applicant contain conflicting claims,
elimination of such claims from all but one application may be required
in the absence of good and sufficient reason for their retention during
pendency in more than one application.
(f) Applications or patents under reexamination naming different
inventors and containing patentably indistinct claims. If an
application or a patent under reexamination and at least one other
application naming different inventors are owned by the same person and
contain conflicting claims, and there is no statement of record
indicating that the claimed inventions were commonly owned or subject
to an obligation of assignment to the same person on the effective
filing date of the later claimed invention, the Office may require the
assignee to state whether the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person on the
effective filing date of the later claimed invention. Even if the
claimed inventions were commonly owned, or subject to an obligation of
assignment to the same person, on the effective filing date of the
later claimed invention, the conflicting claims may be rejected under
the doctrine of double patenting in view of such commonly owned or
assigned applications or patents under reexamination.
(g) Time periods not extendable. The time periods set forth in this
section are not extendable.
8. Section 1.104 is amended by revising paragraphs (c)(4) and
(c)(5) and adding a new paragraph (c)(6) to read as follows:
§ 1.104 Nature of examination.
(c) * * *
(4)(i) Subject matter that qualifies as prior art under 35 U.S.C.
102(a)(2) and a claimed invention will be treated as commonly owned for
purposes of 35 U.S.C. 102(b)(2)(C) if the applicant provides a
statement that the prior art and the claimed invention, not later than
the effective filing date of the claimed invention, were owned by the
same person or subject to an obligation of assignment to the same
person.
(ii) Subject matter that qualifies as prior art under 35 U.S.C.
102(a)(2) and a claimed invention will be treated as commonly owned for
purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research
agreement under 35 U.S.C. 102(c) if:

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 437

(A) The applicant provides a statement that the prior art was
developed and the claimed invention was made by or on behalf of one or
more parties to a joint research agreement, within the meaning of 35
U.S.C. 100(h) and § 1.9(e), that was in effect on or before the
effective filing date of the claimed invention, and the claimed
invention was made as a result of activities undertaken within the
scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses
or is amended to disclose the names of the parties to the joint
research agreement.
(5)(i) Subject matter which qualifies as prior art under 35 U.S.C.
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed
invention in an application or a patent granted on or after December
10, 2004, will be treated as commonly owned for purposes of 35 U.S.C.
103(c) in effect prior to March 16, 2013, if the applicant provides a
statement that the prior art and the claimed invention, at the time the
claimed invention was made, were owned by the same person or subject to
an obligation of assignment to the same person.
(ii) Subject matter which qualifies as prior art under 35 U.S.C.
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed
invention in an application or a patent granted on or after December
10, 2004, will be treated as commonly owned for purposes of 35 U.S.C.
103(c) in effect prior to March 16, 2013, on the basis of a joint
research agreement under 35 U.S.C. 103(c)(2) in effect prior to March
16, 2013 if:
(A) The applicant provides a statement to the effect that the prior
art and the claimed invention were made by or on behalf of the parties
to a joint research agreement, within the meaning of 35 U.S.C. 100(h)
and § 1.9(e), which was in effect on or before the date the claimed
invention was made, and that the claimed invention was made as a result
of activities undertaken within the scope of the joint research
agreement; and
(B) The application for patent for the claimed invention discloses
or is amended to disclose the names of the parties to the joint
research agreement.
(6) Patents issued prior to December 10, 2004, from applications
filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in
effect on November 28, 1999.
* * * * *
9. Section 1.109 is added to read as follows:
§ 1.109 Effective filing date of a claimed invention.
(a) The effective filing date for a claimed invention in a patent
or application for patent, other than in a reissue application or
reissued patent, is the earliest of:
(1) The actual filing date of the patent or the application for the
patent containing a claim to the invention; or
(2) The filing date of the earliest application for which the
patent or application is entitled, as to such invention, to priority to
or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121,
or 365.
(b) The effective filing date for a claimed invention in a reissue
application or a reissued patent is determined by deeming the claim to
the invention to have been contained in the patent for which reissue
was sought.
10. Section 1.110 is revised to read as follows:
§ 1.110 Inventorship and ownership of the subject matter of individual
claims.
When more than one inventor is named in an application or patent,
the Office may require an applicant or patentee to identify the
inventor, and ownership on the effective filing date, of each claimed

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 438

invention in the application or patent, when necessary for purposes of
an Office proceeding.
11. Section 1.130 is revised to read as follows:
§ 1.130 Affidavit or declaration of attribution, prior disclosure,
or derivation under the Leahy-Smith America Invents Act.
(a) When any claim of an application or a patent under
reexamination is rejected, the applicant or patent owner may submit an
appropriate affidavit or declaration to establish that:
(1) The disclosure on which the rejection is based was by the
inventor or joint inventor, the subject matter disclosed had been
publicly disclosed by the inventor or a joint inventor before the
disclosure of the subject matter on which the rejection is based, or
the subject matter disclosed had been publicly disclosed by the
inventor or a joint inventor before the date the subject matter in the
patent or application on which the rejection is based was effectively
filed; or
(2) The disclosure on which the rejection is based was by a party
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor, the subject matter disclosed had been
publicly disclosed by a party who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor before the
disclosure of the subject matter on which the rejection is based, or
the subject matter disclosed had been publicly disclosed by a party who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor before the date the subject matter in the
patent or application on which the rejection is based was effectively
filed.
(b) If the disclosure on which the rejection is based is by the
inventor or a joint inventor, the affidavit or declaration under
paragraph (a)(1) of this section must provide a satisfactory showing
that the inventor or a joint inventor is in fact the inventor of the
subject matter of the disclosure.
(c) If the disclosure on which the rejection is based is not by the
inventor or a joint inventor, the affidavit or declaration under
paragraph (a)(1) of this section must identify and provide the date of
the earlier disclosure of the subject matter by the inventor or a joint
inventor and provide a satisfactory showing that the inventor or a
joint inventor is the inventor of the subject matter of the earlier
disclosure. If the earlier disclosure was a printed publication, the
affidavit or declaration must be accompanied by a copy of the printed
publication. If the earlier disclosure was not a printed publication,
the affidavit or declaration must describe the disclosure with
sufficient detail and particularity to determine that the disclosure is
a public disclosure of the subject matter on which the rejection is
based.
(d) If the disclosure on which the rejection is based is by a party
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor, an affidavit or declaration under
paragraph (a)(2) of this section must provide a satisfactory showing
that the inventor or a joint inventor is the inventor of the subject
matter of the disclosure and directly or indirectly communicated the
subject matter of the disclosure to the party.
(e) If the disclosure on which the rejection is based is not by a
party who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor, an affidavit or declaration
under paragraph (a)(2) of this section must identify and provide the
date of the earlier disclosure of the subject matter by the party who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor and also provide a satisfactory showing
that the inventor or a joint inventor is the inventor of the subject
matter of the earlier disclosure and directly or indirectly communicated
the subject matter of the disclosure to the party. If the earlier
disclosure was a printed publication, the affidavit or declaration must

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 439

be accompanied by a copy of the printed publication. If the earlier
disclosure was not a printed publication, the affidavit or declaration
must describe the disclosure with sufficient detail and particularity
to determine that the disclosure is a public disclosure of the subject
matter on which the rejection is based.
(f) The provisions of this section are not available if the
rejection is based upon a disclosure made more than one year before the
effective filing date of the claimed invention. The Office may require
the applicant to file a petition for a derivation proceeding pursuant
to § 42.401 et seq. of this title if the rejection is based upon a
U.S. patent or U.S. patent application publication of a patented or
pending application naming another inventor and the patent or pending
application claims an invention that is the same or substantially the
same as the applicant's claimed invention.
(g) The provisions of this section apply to applications for
patent, and to any patent issuing thereon, that contain, or contained
at any time:
(1) A claim to a claimed invention that has an effective filing
date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013;
or
(2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any
patent or application that contains, or contained at any time, a claim
to a claimed invention that has an effective filing date as defined in
35 U.S.C. 100(i) that is on or after March 16, 2013.
12. Section 1.131 is revised to read as follows:
§ 1.131 Affidavit or declaration of prior invention or to disqualify
commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under
reexamination is rejected, the inventor of the subject matter of the
rejected claim, the owner of the patent under reexamination, or the
party qualified under §§ 1.42 or 1.47, may submit an
appropriate oath or declaration to establish invention of the subject
matter of the rejected claim prior to the effective date of the
reference or activity on which the rejection is based. The effective
date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article 21(2) is the
earlier of its publication date or the date that it is effective as a
reference under 35 U.S.C. 102(e) in effect on March 15, 2013. Prior
invention may not be established under this section in any country
other than the United States, a NAFTA country, or a WTO member country.
Prior invention may not be established under this section before
December 8, 1993, in a NAFTA country other than the United States, or
before January 1, 1996, in a WTO member country other than a NAFTA
country. Prior invention may not be established under this section if
either:
(1) The rejection is based upon a U.S. patent or U.S. patent
application publication of a pending or patented application to another
or others which claims the same patentable invention as defined in
§ 41.203(a) of this title, in which case an applicant may suggest
an interference pursuant to § 41.202(a) of this title; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts for an oath or declaration under paragraph
(a) of this section shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date
of the reference coupled with due diligence from prior to said date to
a subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.
(c) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 103 on a U.S. patent or U.S.
patent application publication which is not prior art under 35 U.S.C.

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 440

102(b) in effect on March 15, 2013, and the inventions defined by the
claims in the application or patent under reexamination and by the
claims in the patent or published application are not identical but are
not patentably distinct, and the inventions are owned by the same
party, the applicant or owner of the patent under reexamination may
disqualify the patent or patent application publication as prior art.
The patent or patent application publication can be disqualified as
prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent
under reexamination and patent or published application are currently
owned by the same party, and that the inventor named in the application
or patent under reexamination is the prior inventor under 35 U.S.C. 104
in effect on March 15, 2013.
(d) The provisions of this section apply to applications for
patent, and to any patent issuing thereon, that contains, or contained
at any time:
(1) A claim to a claimed invention that has an effective filing
date as defined in 35 U.S.C. 100(i) that is before March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any
patent or application that contains, or contained at any time, a claim
to a claimed invention that has an effective filing date as defined in
35 U.S.C. 100(i) that is before March 16, 2013.
(e) In an application for patent to which the provisions of § 1.130
apply, and to any patent issuing thereon, the provisions of this
section are applicable only with respect to a rejection under 35 U.S.C.
102(g) in effect on March 15, 2013.
§§ 1.293 through 1.297 [Removed]
13. Sections 1.293 through 1.297 are removed.
14. Section 1.321 is amended by revising the introductory text of
paragraph (d) to read as follows:
§ 1.321 Statutory disclaimers, including terminal disclaimers.
* * * * *
(d) A terminal disclaimer, when filed in a patent application or in
a reexamination proceeding to obviate double patenting based upon a
patent or application that is not commonly owned but resulted from
activities undertaken within the scope of a joint research agreement
under 35 U.S.C. 102(c), must:
* * * * *
July 17, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office

Errata
"All reference to Patent No. 8,250,860 to Takahiko Fujiwara, et al of
Susono-shi, Japan for CONTROL APPARATUS FOR INTERNAL COMBUSTION ENGINE
appearing in the Official Gazette of August 28, 2012 should be deleted since
no patent was granted."
"All reference to Patent No. 8,251,152 to Martin Liess, et al of Seeize,
Germany for TUBULAR HANDLING APPARATUS appearing in the Official Gazette of
August 28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,251,159 to Lyndon J. Hurley of Harrisburg,
SD for VALVE TESTER SUSPENSION ASSEMBLY appearing in the Official Gazette of
August 28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,251,661 to Jorg Kilian, et al of Renningen,
Germany for BLOWER WHEEL appearing in the Official Gazette of August 28, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,251,872 to Tetsuya Shimizu, et al of Anjo,
Japan for POWER TRANSMISSION DEVICE AND VEHICLE HAVING THE SAME appearing in
the Official Gazette of August 28, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,251,886 to Pong-Jeu Lu, et al of Tainan
City, Taiwan for DUAL-PULSATION BI-VENTRICULAR ASSIST DEVICE appearing in the
Official Gazette of August 28, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,251,894 to Ransom H. Byers, et al of
Mountain View, CA for INTEGRATED LOCKING DEVICE WITH PASSIVE SEALING
appearing in the Official Gazette of August 28, 2012 should be deleted since
no patent was granted."
"All reference to Patent No. 8,252,177 to Steven Woodard, et al of
Cumberland, ME for SYSTEM FOR ENHANCING A WASTEWATER TREATMENT PROCESS
appearing in the Official Gazette of August 28, 2012 should be deleted since
no patent was granted."
"All reference to Patent No. 8,252,262 to Chikara Inaba of Yokkaichi-shi,
Japan for METHOD FOR PRODUCING TRICHLOROSILANE appearing in the Official
Gazette of August 28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,252,301 to Antoine Turzi, et al of Mollens,
Switzerland for CELL PREPARATIONS FOR EXTEMPORANEOUS USE, USEFUL FOR HEALING
AND REJUVENATION IN VIVO appearing in the Official Gazette of August 28, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,252,466 to Hidekazu Yamamoto, et al of Kobe
City, Japan for NON-AQUEOUS ELECTROLYTE SECONDARY BATTERY INCLUDING AN
ELECTROLYTE CONTAINING A FLUORINATED CYCLIC CARBONATE AND CARBOXYLIC ESTER AS
A SOLVENT AND A NITRILE COMPUND AS AN ADDITIVE appearing in the Official
Gazette of August 28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,252,592 to Michel Sadelain, et al of New
York, NY for CONSTITUTIVE EXPRESSION OF COSTIMULATORY LIGANDS ON ADOPTIVELY
TRANSFERRED T LYMPHOCYTES appearing in the Official Gazette of August 28,
2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,252,750 to Sumathi Paturu of Pleasant
Grove, AL for INTRAUTERINE FETAL GROWTH RESTRICTION - THE TREATMENT
MODALITIES FOR CLINICAL RESEARCH, AND THE BIOCHEMICAL RATIONALE appearing in
the Official Gazette of August 28, 2012 should be deleted since no patent was
granted."

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 442

"All reference to Patent No. 8,252,827 to Weiwen Ying, et al of Groton, MA
for TRIAZOLE COMPOUNDS THAT MODULATE HSP90 ACTIVITY appearing in the Official
Gazette of August 28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,252,920 to Takayoshi Torii, et al of
Kawasaki-shi, Japan for INOSINE DERIVATIVES AND PRODUCTION METHODS THEREFOR
appearing in the Official Gazette of August 28, 2012 should be deleted since
no patent was granted."
"All reference to Patent No. 8,253,055 to Ryosuke Sasaki, et al of Tokyo,
Japan for VACUUM CIRCUIT BREAKER appearing in the Official Gazette of August
28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,253,184 to Nhan Do, et al of Saratoga, CA
for HIGH ENDURANCE NON-VOLATILE MEMORY CELL AND ARRAY appearing in the
Official Gazette of August 28, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,253,219 to Yoshitaka Kubota, et al of
Kanagawa, Japan for SEMICONDUCTOR DEVICE WITH ELECTRIC FUSE HAVING
INTERCONNECTS AND VIA appearing in the Official Gazette of August 28, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,253,493 to Kevin W. Kobayashi of Torrance,
CA for CAPACITIVELY-COUPLED DISTRIBUTED AMPLIFIER WITH BASEBAND PERFORMANCE
appearing in the Official Gazette of August 28, 2012 should be deleted since
no patent was granted."
"All reference to Patent No. 8,254,027 to Christopher S. Koeppen, et al of
New Hope, PA for SPECTRALLY ADJUSTABLE FILTER appearing in the Official
Gazette of August 28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,254,182 to Vishal Sarin, et al of
Cupertino, CA for ANALOG SENSING OF MEMORY CELLS WITH A SOURCE FOLLOWER
DRIVER IN A SEMICONDUCTOR MEMORY DEVICE appearing in the Official Gazette of
August 28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,254,298 to Masanori Kurita, et al of Osaka,
Japan for WIRELESS COMMUNICATION SYSTEM appearing in the Official Gazette of
August 28, 2012 should be deleted since no was granted."
"All reference to Patent No. 8,254,302 to Takashi Aso of Osaka, Japan for
DATA COMMUNICATION CONTROL APPARATUS, DATA COMMUNICATION SYSTEM, DATA
COMMUNICATION METHOD, AND COMPUTER-READABLE STORAGE MEDIUM RECORDING DATA
COMMUNICATION PROGRAM appearing in the Official Gazette of August 28, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,254,327 to Dong Youn Seo, et al of
Gyeonggi-Do Korea, Republic of for METHOD FOR SCHEDULING DISTRIBUTED VIRTUAL
RESOURCE BLOCKS appearing in the Official Gazette of August 28, 2012 should
be deleted since no patent was granted."
"All reference to Patent No. 8,254,436 to Oren E. Eliezer of Plano, TX for
TIMING AND TIME INFORMATION EXTRACTION FROM A PHASE MODULATED SIGNAL IN A
RADIO CONTROLLED CLOCK RECEIVER appearing in the Official Gazette of August
28, 2012 should be deleted since no patent was granted."
"All refernec to Patent No. 8,254,602 to Kensuke Motomura of Kanagawa,
Japan for AUDIO OUTPUT APPARATUS, AUDIO INPUT APPARATUS, AUDIO CONTROL
APPARATUS, AUDIO CONTROL SYSTEM, AND AUDIO CONTROL METHOD appearing in the
Official Gazette of August 28, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,254,687 to Koichi Kawamoto, et al of Kyoto,
Japan for GAME APPARATUS AND STORAGE MEDIUM STORING A HANDWRITING INPUT
PROGRAM appearing in the Official Gazette of August 28, 2012 should be

September 25, 2012

US PATENT AND TRADEMARK OFFICE

1382 OG 443

deleted since no patent was granted."
"All reference to Patent No, 8,254,814 to Soichiro Mase of Handa-shi,
Japan for DEVELOPING DEVICE appearing in the Official Gazette of August 28,
2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,254,954 to John C. Wang, et al of Taoyuan
City, Taiwan for METHOD AND SYSTEM FOR MANAGING IMAGES AND GEOGRAPHIC
LOCATION DATA IN A MOBILE DEVICE appearing in the Official Gazette of August
28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,255,073 to Stefan Schmors, et al of
Worpswede, Germany for METHOD FOR ASSISTING AT LEAST PARTIALLY MANUAL CONTROL
OF A METAL PROCESSING LINE appearing in the Official Gazette of August 28,
2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,255,295 to Steve F. Naghshineh, et al of
Cincinnati OH for METHODS FOR PROCESSING SHIPPING DOCUMENTATION SENT FROM A
VEHICLE appearing in the Official Gazette of August 28, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,255,710 to Nobuyuki Koike of Kawasaki,
Japan for INFORMATION PROCESSOR, COMPUTER READABLE RECORDING MEDIUM WHICH
RECORDS DATA EVACUATION PROGRAM, AND DATA EVACUATION METHOD appearing in the
Official Gazette of August 28, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,255,719 to Rakesh Hansalia of Milpitas, CA
for ENABLING/DISABLING POWER-OVER-ETHERNET SOFTWARE SUBSYSTEM IN RESPONSE TO
POWER SUPPLY STATUS appearing in the Official Gazette of August 28, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,255,744 to Shu-Yi Yu, et al of Sunnyvale,
CA for MEMORY-BASED ERROR RECOVERY appearing in the Official Gazette of
August 28, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,255,974 to Shinji Kubota of Ima-Shi, Japan
for NETWORK SYSTEM OF PROJECTOR appearing in the Official Gazaette of August
28, 2012 should be deleted since no patent was granted."

Erratum
In the notice of Certificates of Correction appearing in July 24, 2012
Official Gazette, delete in its entirety the reference to Patent No.
7,637,052, issue of July 3, 2012. The errors appearing on the Certificate
of Correction does not correspond to text in the printed patent. The
certificate of correction should not have been issued.

Summary of Final Decisions Issued by the Trademark Trial and Appeal Board

SUMMARY OF FINAL DECISIONS ISSUED BY THE TRADEMARK TRIAL AND APPEAL BOARDAugust 20 – August 24, 2012

Date Issued

Type of Case(1)

Proceeding or Appn. Number

Party or Parties

TTAB Panel (2)

Issue(s)

TTAB Decision

Opposer’s or Petitioner’s mark and goods or services

Applicant’s or Respondent’s mark and goods or services

Mark and goods or services cited by Examining Attorney

Issued as Precedent of TTAB

8-21

EX

79063250

MDF Italia SPA

Seeherman Zervas Greenbaum*

2(e)(2)

Refusal Reversed

MDF IT (and design) [various items of metal involving furniture, windows, doors, stairs and walls] [various catalogues, pamphlets and other printed matter in the fields of furniture and interior design] [various types of furniture, components of furniture, accessories for the home, including those made of composite material]

INSITE [radio frequency identification system for locating or tracking personnel and equipment and vehicles; computer programs, software and various types of equipment used in such systems and applications]

GRAMMY AWARDS and GRAMMY (eight pleaded registrations) [wide variety of goods and services including an annual awards program for the presentation of awards in recognition of distinguished achievement in the field of music]

GLAMMY AWARDS [providing recognition and incentives by the way of awards to demonstrate excellence in the field of arts and entertainment, namely, club nightlife]

No

8-24

EX

85158572

Poly-Gel LLC

Holtzman* Mermelstein Greenbaum

2(d)

Refusal Affirmed

BOOT MATE [Elastomeric split pads for eliminating edge pressures created by footwear equipped with hard toe boxes; elastomeric split pads made of a stretchable foam material for enclosing at least the top, frontal portion of a wearer's foot for reducing discomfort experienced by footwear; elastomeric split pads for eliminating edge pressures created by footwear; silicone split pads for eliminating edge pressures created by footwear]

Mailing and Hand Carry Addresses for Mail to the United States Patent and Trademark Office

MAILING AND HAND CARRY ADDRESSES FOR
MAIL TO THE UNITED STATES PATENT AND TRADEMARK OFFICE
MAIL TO BE DIRECTED TO THE COMMISSIONER FOR PATENTS
For most correspondence (e.g., new patent applications) no mail stop
is required because the processing of the correspondence is routine.
If NO mail stop is included on the list below, no mail stop is required
for the correspondence. See the listing under "Mail to be Directed to the
Director of the Patent And Trademark Office" for additional mail stops
for patent-related correspondence. Only the specified type of document
should be placed in an envelope addressed to one of these special mail
stops. If any documents other than the specified type identified for each
special mail stop are addressed to that mail stop, they will be
significantly delayed in reaching the appropriate area for which they are
intended. The mail stop should generally appear as the first line in
the address.
Most correspondence may be submitted electronically. See the USPTO's
Electronic Filing System (EFS-Web) internet page
http://www.uspto.gov/patents/process/file/efs/index.jsp for additional
information.
Please address mail to be delivered by the United States Postal Service
(USPS) as follows:
Mail Stop _____
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
If no Mail Stop is indicated below, the line beginning Mail Stop should
be omitted from the address.
NEW: Effective September 16, 2012, the Mail Stop description for Mail
Stop Ex Parte Reexam is being revised and a new Mail Stop for supplemental
examination requests is being added as Mail Stop Supplemental Examination.
Except correspondence for Maintenance Fee payments, Deposit Account
Replenishments (see 37 CFR 1.25(c)(4)), and Licensing and Review (see 37 CFR
5.1(c) and 5.2(c)), please address patent-related correspondence to be
delivered by other delivery services (Federal Express (Fed Ex), UPS, DHL,
Laser, Action, Purolator, etc.) as follows:
United States Patent and Trademark Office
Customer Service Window, Mail Stop _____
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Mail Stop
Designations Explanation
Mail Stop 12 Contributions to the Examiner Education Program.
Mail Stop 313(c) Petitions under 37 CFR 1.313(c) to withdraw a
patent application from issue after payment of
the issue fee and any papers associated with the
petition, including papers necessary for a
continuing application or a request for
continued examination (RCE).
Mail Stop AF Amendments and other responses after final
rejection (e.g., a notice of appeal (and any
request for pre-appeal brief conference)),
other than an appeal brief.
Mail Stop Amendment Information disclosure statements, drawings, and
replies to Office actions in patent applications
with or without an amendment to the application or
a terminal disclaimer. (Use Mail Stop AF for
replies after final rejection.)
Mail Stop Appeal For appeal briefs or other briefs under
Brief-Patents part 41 of title 37 of the Code of Federal
Regulations (e.g., former 37 CFR 1.192).
Mail Stop Public comments regarding patent-related
Comments-Patent regulations and procedures.
Mail Stop Conversion Requests under 37 CFR 1.53(c)(2) to convert a
nonprovisional application to a provisional
application and requests under 37 CFR 1.53(c)(3)
to convert a provisional application to a
nonprovisional application.
Mail Stop EBC Mail for the Electronic Business Center including:
Certificate Action Forms, Request for Customer
Number, and Requests for Customer Number Data
Change (USPTO Forms PTO-2042, PTO/SB/124A and 125A,
respectively) and Customer Number Upload
Spreadsheets and Cover Letters.
Mail Stop Expedited Only to be used for the initial filing of
Design design applications accompanied by a
request for expedited examination under
37 CFR 1.155.
Mail Stop Express Requests for abandonment of a patent
Abandonment application pursuant to 37 CFR 1.138,
including any petitions under 37 CFR
1.138(c) to expressly abandon an
application to avoid publication of the
application.
Mail Stop Applications under 35 U.S.C. 156 for patent term
Hatch-Waxman PTE extension based on regulatory review of a product
subject to pre-market review by a regulating
agency. This mail stop is also to be used for
additional correspondence regarding the
application for patent term extension under
35 U.S.C. 156. It is preferred that such initial
requests be hand-carried to:
Office of Patent Legal Administration
Room MDW 7D55
600 Dulany Street (Madison Building)
Alexandria, VA 22314
Mail Stop ILS Correspondence relating to international patent
classification, exchanges and standards.
Mail Stop Issue Fee All communications following the receipt of a
PTOL-85, "Notice of Allowance and Fee(s)
Due," and prior to the issuance of a patent
should be addressed to Mail Stop Issue Fee,
unless advised to the contrary.
Assignments are the exception. Assignments
(with cover sheets) should be faxed to
571-273-0140, electronically submitted
(http://epas.uspto.gov), or submitted in a
separate envelope and sent to Mail Stop
Assignment Recordation Services,
Director - U.S. Patent and Trademark Office
as shown below.
Mail Stop L&R All documents pertaining to applications subject
to secrecy order pursuant to 35 U.S.C. 181, or
national-security classified and required to be
processed accordingly. Such papers, petitions for
foreign filing license pursuant to 37 CFR 5.12(b)
for which expedited handling is requested, and
petitions for retroactive license under 37 CFR
5.25 may also be hand carried to Licensing and
Review:
Technology Center 3600, Office of the Director
Room 4B41
501 Dulany Street (Knox Building)
Alexandria, VA 22314
Mail Stop Missing Requests for a corrected filing receipt and
Parts replies to OPAP notices such as the Notice
of Omitted Items, Notice to File Corrected
Application Papers, Notice of Incomplete
Application, Notice to Comply with Nucleotide
Sequence Requirements, and Notice to File Missing
Parts of Application, and associated papers and
fees.
Mail Stop MPEP Submissions concerning the Manual of Patent
Examining Procedure.
Mail Stop Patent Ext. Applications for patent term extension or
adjustment under 35 U.S.C. 154 and any
communications relating thereto. This mail stop
is limited to petitions for patent term extension
under 35 U.S.C. 154 for applications filed
between June 8, 1995 and May 29, 2000, and patent
term adjustment (PTA) under 35 U.S.C. 154 for
applications filed on or after May 29, 2000.
For applications for patent term extension under
35 U.S.C. 156, use Mail Stop Hatch-Waxman PTE.
For applications for patent term extension or
adjustment under 35 U.S.C. 154 that are mailed
together with the payment of the issue fee, use
Mail Stop Issue Fee.
Mail Stop Patent Submission of comments regarding search templates.
Search Template
Comments
Mail Stop PCT Mail related to international applications filed
under the Patent Cooperation Treaty in the
international phase and in the national phase
under 35 U.S.C. 371 prior to mailing of a
Notification of Acceptance of Application Under
35 U.S.C. 371 and 37 CFR 1.495 (Form
PCT/DO/EO/903).
Mail Stop Petition Petitions to be decided by the Office of Petitions,
including petitions to revive and petitions to
accept late payment of issue fees or maintenance
fees.
Mail Stop PGPUB Correspondence regarding publication of patent
applications not otherwise provided, including:
requests for early publication made after filing,
rescission of a non-publication request, corrected
patent application publication, and refund of
publication fee.
Mail Stop Post In patented files: requests for changes of
Issue correspondence address, powers of attorney,
revocations of powers of attorney, withdrawal as
attorney or agent and submissions under 37
CFR 1.501. Designation of, or changes to, a fee
address should be addressed to Mail Stop M
Correspondence. Requests for Certificate of
Correction need no special mail stop, but
should be mailed to the attention of Certificate
of Correction Branch.
Mail Stop RCE Requests for continued examination under
37 CFR 1.114.
Mail Stop Correspondence pertaining to the reconstruction
Reconstruction of lost patent files.
Mail Stop Ex Parte Original requests for Ex Parte Reexamination
Reexam and all subsequent correspondence other
than correspondence to the Office of the Solicitor
(see 37 CFR 1.1(a)(3) and 1.302(c)). Effective
September 16, 2012, this mail stop is also to be
used for any papers to be filed in an ex parte
reexamination proceeding ordered as a result of
a supplemental examination proceeding.
Mail Stop Inter Original requests for Inter Partes Reexamination
Partes Reexam and all subsequent correspondence other than
correspondence to the Office of the Solicitor
(see 37 CFR 1.1(a)(3) and 1.302(c)).
Mail Stop Reissue All new and continuing reissue application filings.
Mail Stop Sequence Submission of the computer readable form (CRF) for
applications with sequence listings, when the CRF
is not being filed with the patent application.
Mail Stop Supplemental (Effective September 16, 2012). Requests for
Examination Supplemental Examination, including original
request papers and any other correspondence, other
than correspondence to the Office of the
Solicitor (see 37 CFR Secs. 1.1(a)(3) AND 1.302(c)).
This mail stop is limited to original request papers
and any other papers that are to be filed in a
supplemental examination proceeding. For any papers
to be filed in an ex parte reexamination proceeding
ordered as a result of a supplemental examination
proceeding, use "Mail Stop Ex Parte Reexam".
Information for addressing patent-related correspondence may also be found
on the USPTO's web site at http://www.uspto.gov/patents/mail.jsp.
MAIL TO BE DIRECTED TO THE COMMISSIONER FOR TRADEMARKS
Please address trademark-related correspondence to be delivered by the
United States Postal Service (USPS), except documents sent to the Assignment
Services Division for recordation, requests for copies of trademark
documents, and documents directed to the Madrid Processing Unit, as follows:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Mail to be delivered by the USPS to the Office's Madrid Processing Unit,
must be mailed to:
Madrid Processing Unit
600 Dulany Street
MDE-7B87
Alexandria, VA 22314-5796
Mail to be delivered by the USPS to the Office's Deputy Commissioner for
Trademark Policy regarding Letters of Protest must be mailed to:
Letter of Protest
ATTN: Deputy Commissioner for Trademark Policy
600 Dulany Street
Alexandria, VA 22314-5796
Mail to be delivered by the USPS to the Director regarding the Fastener
Quality Act (FQA) must be mailed to:
Director, USPTO
ATTN: FQA
600 Dulany Street, MDE-10A71
Alexandria, VA 22314-5793
Mail to be delivered by the USPS to the Commissioner regarding the
recordal of a Native American Tribal Insignia (NATI) must be mailed to:
Native American Tribal Insignia
ATTN: Commissioner for Trademarks
600 Dulany Street
MDE-10A71
Alexandria, VA 22314-5793
Do NOT send any of the following via USPS certified mail or with a
"signature required" option: submissions to the Madrid Processing Unit,
Letters of Protest, applications for recordal of insignia under the
Fastener Quality Act, notifications of Native American Tribal Insignia.
Trademark-related mail to be delivered by hand or other private courier
or delivery service (e.g., UPS, Federal Express) to the Trademark Operation,
the Trademark Trial and Appeal Board, or the Office's Madrid Processing Unit,
must be delivered to:
Trademark Assistance Center
Madison East, Concourse Level Room C 55
600 Dulany Street
Alexandria, VA 22314
Information for addressing trademark-related correspondence may also be found
on the USPTO's web site at http://www.uspto.gov/trademarks/mail.jsp.
MAIL TO BE DIRECTED TO THE DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE
Please address correspondence to be directed to a mail stop identified
below to be delivered by the United States Postal Service (USPS) as follows
(unless otherwise instructed):
Mail Stop _____
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
Mail Stop
Designations Explanation
Mail Stop 3 Mail for the Office of Personnel from NFC.
Mail Stop 6 Mail for the Office of Procurement.
Mail Stop 8 All papers for the Office of the Solicitor except
communications relating to pending litigation and
disciplinary proceedings; papers relating to pending
litigation in court cases shall be mailed only to
Office of the Solicitor, P.O. Box 15667, Arlington,
VA 22215 and papers related to pending disciplinary
proceedings before the Administrative Law Judge or
the Director shall be mailed only to the Office of
the Solicitor, P.O. Box 16116, Arlington, VA 22215.
Mail Stop 11 Mail for the Electronic Ordering Service (EOS).
Mail Stop 13 Mail for the Employee and Labor Relations Division.
Mail Stop 16 Mail related to refund requests, other than
requests for refund of a patent application
publication fee. Such requests should be directed
to Mail Stop PGPub.
Mail Stop 17 Invoices directed to the Office of Finance.
Mail Stop 24 Mail for the Inventor's Assistance Program,
including complaints about Invention Promoters.
Mail Stop 171 Vacancy Announcement Applications.
Mail Stop Assignment All assignment documents, security interests,
Recordation Services and other documents to be recorded in the
Assignment records. Note that documents with
cover sheets that are faxed to 571-273-0140 or
submitted electronically (http://epas.uspto.gov)
are processed much more quickly than those
submitted by mail.
Mail Stop Document All requests for certified or uncertified
Services copies of patent or trademark documents.
Mail Stop EEO Mail for the Office of Civil Rights.
Mail Stop External Mail for the Office of External Affairs.
Affairs
Mail Stop Interference Communications relating to interferences and
applications and patents involved in interference.
Mail Stop M Mail to designate or change a fee
Correspondence address, or other correspondence related to
maintenance fees, except payments of
maintenance fees in patents. See below for
the address for maintenance fee payments.
Mail Stop OED Mail for the Office of Enrollment and Discipline.
Maintenance Fee Payments
Unless submitted electronically over the Internet at www.uspto.gov,
payments of maintenance fees in patents should be mailed through the
United States Postal Service to:
United States Patent and Trademark Office
P.O. Box 979070
St. Louis, MO 63197-9000
Alternatively, payment of maintenance fees in patents (Attn: Maintenance
Fee) using hand-delivery and delivery by private courier may be made to:
Director of the U.S. Patent and Trademark Office
Attn: Maintenance Fee
2051 Jamieson Avenue, Suite 300
Alexandria, Virginia 22314
Deposit Account Replenishments
To send payment to replenish deposit accounts, send the payments through
the United States Postal Service to:
United States Patent and Trademark Office
P.O. Box 979065
St. Louis, MO 63197-9000
Alternatively, deposit account replenishments (Attn: Deposit Accounts)
using hand-delivery and delivery by private courier (e.g., FedEx, UPS, etc.)
may be delivered to:
Director of the U.S. Patent and Trademark Office
Attn: Deposit Accounts
2051 Jamieson Avenue, Suite 300
Alexandria, VA 22314
Information abount deposit account replenishments may also be found on
the USPTO's web site at
http://www.uspto.gov/about/offices/cfo/finance/Deposit_Account_
Replenishments.jsp